Acknowledgements
This communication is in response to applicant’s response filed on 08/19/2026.
Claims 1-18 have been cancelled. Claims 19-24, 26, 29, and 31-36 have been amended. Claims 37-38 have been added. Claims 19-38 are pending and have been examined.
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 .
Response to Arguments
Regarding applicant’s arguments:
Regarding applicant’s arguments, see pgs. 21-22, filed 08/19/2026, with respect to the Claim Interpretation - 35 USC § 112(f) regarding claims 19, 23-24, 29, 31, 33-34, and 36 that the claims have been amended to identify the specific electronic structures that perform the recited operations, including communication interfaces, databases, token memory, one or more processors, non-transitory memory, and executable electronic-wallet instructions have been considered and are persuasive. The Claim Interpretation - 35 USC § 112(f) has been withdrawn.
Regarding applicant’s arguments, see pgs. 22-23, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19, 23-24, 29, 31, 33-34, and 36 under Claim Rejections - 35 USC § 112(b) that since the Claim Interpretation - 35 USC § 112(f) has been withdrawn the Claim Rejections - 35 USC § 112(b) should be withdrawn has been considered and is persuasive. The Claim Rejections - 35 USC § 112(b) has been withdrawn.
Regarding applicant’s arguments, see pgs. 23-24, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19, 23-24, 29, 31, 33-34, and 36 under Claim Rejections - 35 USC § 112(a) that since the Claim Interpretation - 35 USC § 112(f) has been withdrawn the Claim Rejections - 35 USC § 112(a) should be withdrawn has been considered and is persuasive. The Claim Rejections - 35 USC § 112(a) has been withdrawn.
Regarding applicant’s arguments, see pgs. 23-24, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19-36 under Double Patenting rejection regarding claims 19-36 that the amended claims are patentably distinct from copending application 18/610,584 claims 1-15 because claim 19 requires register-side syntax checking, database-index searching using the public part of an input token reference, verification of signatures generated using the private parts of previously registered input tokens, token-value conservation, storage of output references, and deletion or marking of input references are persuasive. The Double Patenting rejection has been withdrawn.
Regarding applicant’s arguments, see pgs. 24-25, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19-36 under Double Patenting rejection regarding claims 19-36 that the amended claims do not claim a recipient-generated-key and registration-confirmation protocol like copending application 18/689,662, but instead require the processing performed at the token reference register after a modification request are persuasive. The Double Patenting rejection has been withdrawn.
Regarding applicant’s arguments, see pg. 25, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19-36 under Double Patenting rejection regarding claims 19-36 that the amended claims do not require a common registration request spanning different secure transaction units or a first-mode/second-mode request architecture like copending application 18/678,636 are persuasive. The Double Patenting rejection has been withdrawn. However, the amended instant claims have resulted in a new Double Patenting rejection. More detail is provided below
Regarding applicant’s arguments, see pgs. 25-29, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19-36 under Claim Rejections - 35 USC § 101 regarding claims 19, 33, and 35 that the rejection should not disregard the claimed cryptographic relationships as merely descriptive are persuasive. Specifically, the argument the content because the public part is derived from the private token element by a cryptographic one-way function, functions as a database index, and verifies a signature made with the corresponding private token element…the input and output token values are machine-processed to prevent unauthorized creation or destruction of token value…and the amended claims integrate that concept into a practical application under Step 2A, Prong Two, by reciting a particular technical solution to technical problems arising in secure electronic token systems are persuasive. Therefore, the Claim Rejections - 35 USC § 101 for claims 19-36 has been withdrawn.
Regarding applicant’s arguments, see pgs. 29-30, filed 08/19/2026, with respect to the rejection(s) of claim(s) 35 under Claim Rejections - 35 USC § 102(a)(1) regarding claim 35 that the amended claim requires a secure element having a communication interface, token memory, one or more processors, and a non-transitory memory storing electronic-wallet instructions that create a modified token, create input and output token references, create a registration request containing those references, sign the registration request using the private part of each previously registered input token, and transmit the signed request to a token reference register is not taught by Fritzhanns ‘950 (DE102018009950A1) are persuasive. Therefore, the Claim Rejections - 35 USC § 102(a)(1) for claim 35 has been withdrawn.
Regarding applicant’s arguments, see pgs. 30-33, filed 08/19/2026, with respect to the rejection(s) of claim(s) 19 and 33 under Claim Rejections - 35 USC § 103 regarding claims 19 and 33 that the combination of Fritzhanns ‘950 (DE102018009950A1) in view of Fritzhanns ‘945 (DE102018009945A1) do not disclose receiving a modification registration request, searching a token-reference database using public parts as indices, verifying signatures generated by the private parts of previously registered input tokens, checking conservation across input and output token references, or replacing input references with output references, in the manner described by the current claims. In addition, the claimed signature arrangement is particularly absent from the cited combination. For example, for SPLIT, MERGE, and SWITCH requests, the current disclosure signs the registration request using the private part or parts of the previously registered input token or tokens, and the register verifies those signatures using the corresponding public token- reference parts. The combination of Fritzhanns '950 and Fritzhanns '945 fails to teach or suggest using previously registered input tokens to authorize the register-side invalidation of their references and registration of a replacement output reference are persuasive. Therefore, the Claim Rejections - 35 USC § 103 for claims 19 and 33 has been withdrawn.
Priority
Applicant's claim for the benefit of PCT Application No. PCT/EP2022/025325 filed on 07/12/2022 is acknowledged. Applicant's claim for the benefit of Germany Application No. DE10 2021 004 020.1 filed on 08/04/2021 is acknowledged.
Double Patenting
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 19-38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24-41 of copending Application No. 18/681,041 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications an electronic transaction system comprising a secure element performing a method for registering tokens, the system having a register layer and a direct transaction layer, wherein the following steps are performed receiving registration requests in the token reference register of the transaction system, the registration request having at least one token reference, including at least one input token reference or at least one output token reference…verifying, using the one or more processors the token reference register, whether input token reference of one of the registration requests request can be uniquely assigned to a token of the transaction system, the input token reference being checked to see whether it is stored in the token reference register…and storing the output token reference other than the checked input token reference in the memory unit of the token reference register for registering the token uniquely assigned to this output token reference in the transaction system if it is established in the verification step that a token of the transaction system can be assigned to the checked input token reference.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: As per claim 19, the closest prior art of record, German application DE-102018009950-A1 to Fritzhanns teaches a method for obtaining a blind signature for an electronic coin data record, eMD in a subscriber, comprising the method steps: generating a public key from a subscriber-generated serial number; Generating an eMD using the generated public key by the subscriber; Blending the generated eMD to obtain a blended unsigned eMD by the participant; Sending the blinded unsigned eMsD from the subscriber to a signature publisher; The subscriber receiving a signed, blinded eMD from the signature publisher; and removing the bezel to obtain a signed unblanked eMD by the subscriber. The invention also relates to a method for deriving a partial monetary amount from an eMD by a subscriber. The invention also relates to methods for checking the generated and / or received blind signature. Furthermore, the invention relates to a payment system for transmitting an electronic coin data record between at least two participants. In addition, German application DE-102018009945-A1 to Fritzhanns teaches a method for the direct exchange of electronic coin data sets between security elements of terminals, comprising the steps of: receiving a coin data set in a first security element, the coin data set being represented by a random number and the coin data set representing a number of elements, and each element of the received coin data set can be mapped as the result of a cryptographic function from the random number and the position of the element in the coin data record; Transmitting a first coin data record derived from the received coin data record from the first security element to a second security element, the derived coin data record having at least one element of the received coin data record and the position of the element in the received coin data record; Transmitting a second coin data set derived from the received coin data set to the second security element, the second derived coin data set having at least one element of the received coin data set directly following the element of the first derived coin data set and the position of the further element in the received coin data set; combining the first derived coin record with the second derived coin record to obtain a combined derived coin record; and displaying ownership of the combined derived coin record from the second security element to a verification unit. The invention also relates to a payment system with at least two terminals, each of the terminals having a security element, the payment system comprising. In addition, United States Patent Application No. 20230026665 to Hurry teaches receiving, by a central entity computer, a request for digital currency. The request includes a serial number and a denomination of a physical currency. The central entity computer generates the digital currency for the denomination and linked to the serial number. The generating includes recording the digital currency on a blockchain. The central entity computer transmits a notification of the generation of the digital currency. The central entity computer causes removal of the physical currency from circulation in a fiat currency system. In addition, United States Patent Application No. 20210256487 to Johnson teaches a method performed by a processing system including a processor of sending a passed ledger associated with a virtual coin to a requestor; receiving a next block for the passed ledger from the requestor; calculating a hash value for the next block; and sending an identifier for the next block and the hash of the next block for recording in the hash ledger responsive to the hash value matching the hash of the next block. Other embodiments are disclosed. In addition, United States Patent Application No. 20190188704 to Grendon teaches a method for processing a trust-based transaction via a blockchain includes: receiving data associated with a proposed trust-based transaction including at least a transaction amount, payment data, and a broker identifier; processing payment for the transaction amount using the payment data; identifying a blockchain address associated with a broker corresponding to the broker identifier; generating a digital token, wherein the digital token is unique to the proposed trust-based transaction; electronically transmitting the generated digital token to a first computing device; and electronically transmitting at least the transaction amount, blockchain address, and at least one of: the generated digital token and data used to generate the generated digital token to a node associated with a blockchain network.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of claim 19, each token reference comprises at least the token value of the token and a public part of the token-individual key pair as token reference elements wherein the public part of the token-individual key pair was obtained by applying a cryptographic one-way function to the private part of the token-individual key pair of the token; checking, using one or more processors of the token reference register, whether the received registration request is syntactically correct; when the registration request relates to a modification of at least one previously registered token: determining, using the one or more processors, whether each input token reference of the registration request is stored in a database of the token reference register by searching the database using the public part of the input token reference as a database index; verifying, using the one or more processors, one or more signatures of the registration request, each of the one or more signatures having been generated using the private part of the token-individual key pair of a respective previously registered token uniquely assigned to a respective input token reference; determining, using the one or more processors, whether a difference between a sum of token values of the output token references and a sum of token values of the input token references is zero; storing, in the database, each output token reference of the registration request that is not already stored in the database, thereby registering the token uniquely assigned to the output token reference in the transaction system; and after determining that each input token reference is stored in the database, successfully verifying the one or more signatures, and determining that the difference is zero, deleting or marking as deleted, in the database, each input token reference of the registration request.
Claims 20-32 and 37-38 are dependent on claim 19 and contain allowable subject matter for the same reasons stated above. In addition, claim 33 is analogous to claim 19, and thus contains allowable subject matter for the same reasons stated above. Claims 34 and 36 are dependent on claim 33 and contain allowable subject matter for the same reasons stated above.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of claim 35, create a modified token from at least one previously registered token stored in the token memory; create an output token reference uniquely assigned to the modified token, the output token reference comprising the token value of the modified token and a public part obtained by applying a cryptographic one-way function to a private part of a token-individual key pair of the modified token; create a registration request comprising, as at least one input token reference, a token reference uniquely assigned to each previously registered token used to create the modified token and, as an output token reference, the output token reference uniquely assigned to the modified token; sign the registration request using the private part of the token-individual key pair of each previously registered token represented by an input token reference; and transmit the signed registration request to a token reference register of the electronic transaction system.
Conclusion
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.
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/COURTNEY P JONES/Primary Examiner, Art Unit 3699
