DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 in the reply filed on November 28, 2025, is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on February 26, 2024, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Claim Rejections - 35 USC § 112
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 1-5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per Claims 1-5: Independent claim 1 recites “whereby the public key of the key pair and the encryption key for the private key”. However, there is insufficient antecedent basis for “the encryption key”. Independent claim 1 also recites “the other party receives the encrypted private key”. There is insufficient antecedent basis for “the other party”. Independent claim 1 recites “the transfer wallet”. There is insufficient antecedent basis for “the transfer wallet”. Dependent claims 2-5 are rejected by reason of their dependency from independent claim 1.
Per Claim 3: Claim 3 recites “the mediating third party”. However, there is insufficient antecedent basis for this term. Claim 3 also recites “the key components”. There is insufficient antecedent basis for this term.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Per Claims 1-5: A machine is a "concrete thing, consisting of parts, or of certain devices and combination of devices." See MPEP 2106.03(I). The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because while the claims are nominally recited towards a system/machine, the claims fail to recite any concrete thing. Rather, the claims recite only functionality in the passive voice. Therefore, because the claim fails to recite any physical structure, the claim is directed towards non-statutory subject matter. Claims 2-5 are rejected by reason of their dependency and their failure to cure the deficiencies of independent claim 1.
For purposes of subject matter eligibility based on abstract ideas, the claims will be presumed to be directed towards one of the four statutory categories.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. There are two criteria for subject matter eligibility. The first is that the claimed invention must be to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter. See MPEP 2106(I). Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. See MPEP 2106(I). Here, claims 1-5 are directed towards a machine. Therefore, the analysis proceeds to determine whether the claims recite abstract ideas.
Per Claim 1: Claim 1, as a whole as best understood based on the claim and specification, is directed towards the abstract idea of an intermediary, e.g., an escrow, managing the relationship between the buyer and seller by facilitating a transaction. In particular, the claim recites providing the buyer and seller with information, i.e., the various keys, to complete a transaction. In other words, the claim recites Certain Methods of Organizing Human Activities recognized as reciting abstract ideas. More specifically, the following underlined claim elements recite abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
A secure data asset transfer system where a wallet is generated utilising a public and private key pair;
whereby the private key of the key pair is encrypted;
whereby the public key of the key pair and the encryption key for the private key are given to a party to a transaction; and
the other party receives the encrypted private key and the public key of the transfer wallet;
where a copy of the encrypted private key, the public key and the encryption key used to encrypt the private key are placed in storage.
Because the claim recites abstract ideas, the analysis proceeds to determine whether the claim recites additional elements that recite a practical application of the abstract ideas. According to MPEP 2106.04(d), additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, or that generally link the use of the abstract ideas to a particular technological environment or field of use are not indicative of a practical application. Here, the claim fails to recite any additional elements. Therefore, the claim recites no additional elements that could serve to recite a practical application of the abstract ideas.
The analysis then proceeds to determine whether the additional elements, when considered individually and in combination, recite significantly more than the abstract ideas. According to MPEP 2106.05, additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, that generally link the use of the abstract ideas to a particular technological environment or field of use, or that recite well-understood, routine, and conventional activities are not indicative of reciting significantly more than the abstract ideas. Claim elements previously considered to recite insignificant extra-solution activities are reevaluated at this step to determine whether they recite well-understood, routine, and conventional activities. Such findings must be supported by the evidentiary requirements set forth in the Berkheimer Memo. Here, as noted above, the claim fails to recite any additional elements. Therefore, the claim recites no additional elements that could recite serve to recite significantly more than the abstract ideas.
Accordingly, claim 1 is rejected as being directed towards patent ineligible subject matter.
Per Claims 2-5: Claims 2-5 have also been analyzed for subject matter eligibility. However, these claims also fail to recite patent eligible subject matter for the following reasons:
Claim 2 recites the abstract idea of inviting an independent party to a transaction when there is a dispute between the transaction parties, which is a Certain Method of Organizing Human Activities.
Claim 3 recites the abstract idea of having a mediating third party to a dispute to determine which party is in the wrong and giving them the information needed to control the wallet, which is a Certain Method of Organizing Human Activities.
Claim 4 recites deleting the transaction data needed to complete the transaction once the transaction has been completed, which is a Certain Method of Organizing Human Activities.
Claim 5 recites that the transaction data is stored offline, which is a Certain Method of Organizing Human Activities.
Claims 1-5 are rejected under 35 U.S.C. 101 because Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-5 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Per Claims 1-5: Independent claim 1 appears to recite functions that are performed by “a party to a transaction” and “the other party”. The interpretation of these parties based on the claim language and in light of the specification is broad enough to encompass humans performing the functions. Claims 2-5 are rejected by reason of their dependency and their failure to cure the deficiencies of independent claim 1.
Per Claim 2: Claim 2 recites “an independent party”. The interpretation of this term based on the claim language and in light of the specification is broad enough to encompass human beings.
Per Claim 3: Claim 3 recites “the mediating third party”. The interpretation of this term based on the claim language and in light of the specification is broad enough to encompass human beings.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/076234 to Nguyen et al. in view of U.S. Patent No. 11,316,685 to Doherty et al.
Per Claim 1: Nguyen discloses:
A secure data asset transfer system where a wallet is generated utilising a public and private key pair; (see Nguyen at p. 3, ll. 45-47: In one example, the escrow account may be a cryptocurrency wallet that stores the public and private key created for the wallet or "address" which can be used to receive or spend the cryptocurrency.)
whereby the private key of the key pair is encrypted; (see Nguyen at p. 4, ll. 15-18: Specifically, the data access key SKT is encrypted with the sender’s public key (PKA) to obtain a first encrypted private key, EPKA(SKt ) , and the data access key SKT is encrypted again with the recipient's public key (PKB) to obtain a second encrypted private key, EPKB (SKT ) .)
However, Nguyen fails to disclose but Doherty, an analogous art of key distribution, discloses:
whereby the public key of the key pair and the encryption key for the private key are given to a party to a transaction; and (see Doherty 13:16-21: At 406, the client module 102 generates an asymmetric key pair that is associated with the user's account. The user's asymmetric key pair includes a user's private key 408 and a user's public key 410. At 412, the client module 102 encrypts the user's private key 408 of the asymmetric key pair using the user's symmetric encryption key 402.)
the other party receives the encrypted private key and the public key of the transfer wallet; (see Doherty at 13:21-34: The user's encrypted private key is referred to as the user's escrow key 414. The client module 102 then sends the user's escrow key 414 and the user's public key 410 to ECM module 100 and, more specifically, to the request handler module 106 of the ECM module 100. The request handler module 106 authenticates the user of the client module 102 with the authentication module 108 of the ECM module 100. Upon authentication, the request handler module 106 communicates the user's unencrypted asymmetric public key 410 along with the user's escrow key 414, which is the user's corresponding private key 408 that has been encrypted using the user's symmetric encryption key to the escrow keying module 110.)
where a copy of the encrypted private key, the public key and the encryption key used to encrypt the private key are placed in storage. (see Doherty at 13:34-42: At 416, the escrow keying module 110 then stores the user's public key 410 and the user's escrow key 414 in the ECM storage unit 112. The ECM module 100 can then make available the user's public key 410 to external processes that wish to make encrypted content accessible to the user. The encrypted asymmetric private key, i.e., the user's escrow key 414, is held in escrow by the escrow keying module 110 and stored in the ECM storage unit 112.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nguyen so that the keys are distributed to the parties to the transaction using the key distribution techniques disclosed in Doherty. One of ordinary skill in the art would have been motivated to do so to increase the security of the transaction.
Per Claim 2: The combination of Nguyen and Doherty discloses the subject matter of claim 1, from which claim 2 depends. Nguyen further discloses:
wherein the storage is only accessible to an independent party that has been invited by one or the other of the transaction parties in the event there is a dispute. (see Nguyen at p. 20, ll. 4-7: In one example, there may be a dispute between Alice 202 and Bob 206, while there is no dispute between Alice 202 and Charlie 212. In an example where there is a dispute arising between Alice 202 and Bob 206, a dispute resolution process as discussed in Figure 1 C may be initiated (i.e. no release of encrypted key to any parties until the dispute is settled).)
Per Claim 3: The combination of Nguyen and Doherty discloses the subject matter of claim 1, from which claim 3 depends. Nguyen further discloses:
whereby in the event of a dispute between the two transaction participants then the mediating third party determines which party is in the wrong and delivers to them the key components they need to successfully control the transfer wallet. (see Nguyen at p. 28, ll. 41-45: However, if there is a dispute between Alice and Bob, a dispute resolution process as discussed in the description for Figure 1 C may be initiated. For instance, if Alice has not deposited her BTC into the second data storage within a predetermined time for the exchange to be performed, the escrow server is configured to send the first encrypted key BK1 to Bob for him to retrieve the ETH he has deposited in the first data storage.)
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen and Doherty as applied to claim 1 above, and further in view of U.S. Patent Pub. No. 2019/0333070 to Lochan Dass et al.
Per Claim 4: The combination of Nguyen and Doherty discloses the subject matter of claim 1, from which claim 4 depends. However, the combination of Nguyen and Doherty fails to disclose but Lochan Dass, an analogous art of transactions, discloses:
whereby the keys stored in offline storage are deleted once the transaction has been completed. (see Lochan Dass at ¶ 22: The Personalized Data Key is securely removed and deleted from the POS terminal or server immediately upon completion of any transaction.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nguyen so that the encryption keys are deleted after the transaction has been completed using the techniques disclosed in Lochan Dass. One of ordinary skill in the art would have been motivated to do so to increase the security of the transaction.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen and Doherty as applied to claim 1 above, and further in view of U.S. Patent No. 11,468,435 to Cheng et al.
Per Claim 5: The combination of Nguyen and Doherty discloses the subject matter of claim 1, from which claim 5 depends. However, the combination of Nguyen and Doherty fails to disclose but Cheng, an analogous art of offline key storage, discloses:
wherein the storage is offline. (see Cheng at 2:43-54: In a blockchain network, a cold wallet refers to offline storage of a private key used to sign transactions in an offline environment. That is, the private key does not come into contact with a server connected online during the signing process, thereby enhancing security. To achieve strict cold offline key storage, a key is loaded to an HSM only when it is needed. The key will be deleted after the signing. To achieve the offline key signing, the HSM is disconnected from the network during the signing. To protect the HSM and its trusted client from being hacked, the HSM is unidirectionally connected to the network where the key signing request is sent.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nguyen so that the keys are stored offline using the techniques disclosed in Cheng. One of ordinary skill in the art would have been motivated to do so to increase the security of the transactions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2020/0119908 discloses a system includes at least one processor and at least one memory communicatively coupled to the at least one processor. The at least one processor is configured to encrypt at least one set of asset encryption key parts into at least one set of encrypted asset encryption key parts using at least one symmetric key or at least one public key, each public key belonging to a corresponding one of at least one public/private keypair. At least a subset of the at least one set of asset encryption key parts are used to reconstruct the asset encryption key, which is used to perform an action using at least one asset key.
U.S. Patent Pub. No. 2021/0051022 discloses methods, systems, and apparatus, including computer programs encoded on computer storage media, for signing digital transactions from multiple client devices using secured encrypted private keys associated with electronic accounts. One of the operations is performed by storing multiple encrypted private keys in a memory cache accessible by a primary device. Each of the stored encrypted private keys are associated with an electronic account. An electronic transaction which is associated with an electronic account is received from a secondary device. A particular encrypted private key from the stored multiple encrypted private keys is identified. The identified encrypted private key is transmitted to a decrypting service where the encrypted private key is decrypted. The electronic transaction is then digitally signed based on the unencrypted private key. Then the digitally signed electronic transaction is transmitted to the requesting secondary device.
U.S. Patent Pub. No. 2022/0103356 discloses methods and systems of recovering a cryptographic key associated with a blockchain based computer network, including encryption of at least a portion of a cryptographic key of the computer network with a recovery public key, sending of the encrypted at least a portion of the cryptographic key to at least one second computing device, sending of a recovery private key to a recovery escrow service, detection that the at least one first computing device is unavailable, publishing the recovery private key in a public repository, retrieving the recovery private key from the public repository, and decryption of the encrypted at least a portion of the cryptographic key by the at least one second computing device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
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 at (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 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.
/NILESH B KHATRI/Primary Examiner, Art Unit 3699