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 .
This communication is a Final Office Action in response to Applicant’s amendment filed on December 29, 2025.
Claims 1-3 and 6-7 have been examined in this application. Claims 4 and 5 are cancelled.
No information disclosure statement (IDS) has been filed.
Response to Arguments
Applicant's arguments, filed on December 29, 2025, pages 3-4, regarding claim rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are not directed to an abstract idea, the claim address a technical problem and provide a technical solution in the digital asset environment. The Applicant also argues that the claims integrate any abstract idea into a practical application by imposing a technical solution using the software core/API protocols, solve a computer technology problem by improving security and efficiency of asset transfers, and providing non-generic structure based on the claim limitations as recited.
The Examiner respectfully disagrees. The amended claims provide a clarified level of scope, yet under the broadest reasonable interpretation, amount to a transfer of assets between users and monitoring of the asset transfer between users. The claimed scope captures an abstract idea and further fails to include additional elements to transform the abstract idea into a practical application. Applicant’s argued technical solution is not captured by the claims, nor is it clearly evident in the Specification so at least to say that the claims don’t capture the improvement as recited in the Specification. Here, the claims amount to mere settlement of a transaction using APIs, which are nothing more than communication protocols used to transfer funds based on the type of funds the users in the peer-to-peer network want to transfer. The APIs assist in this transfer. Likewise, the claims fail to capture any security improvements or technical improvements to a specific field. Instead, the claims provide a level of detail that amounts to simply transferring assets between users and with use of basic off-the-self device(s) to execute instructions to carry out the abstract idea. At best the additional elements merely automate the abstract idea. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as storing data, receiving data executing an actions and monitoring data/analyzing data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. 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 additional elements add insignificant extra-solution activity to the judicial exception. Likewise, the claims merely link the use of the judicial exception to a particular technological environment or field of use.
As a result, the claims are deemed ineligible. Under Step 2B, the claims fail to amount to significantly more than the abstract idea. The dependent claims also fail to include any additional elements that would help transform any abstract idea into a practical application.
Applicant should amend the claims to capture how the device is able to send funds to another device without an intermediary, how this is done securely, and how it is done to amount to an efficient manner that would result in an improvement to a technology, device, or a field.
Applicant's arguments, filed on December 29, 2025, pages 4-6, regarding claim rejections under 35 U.S.C. 102 have been fully considered but are moot as they do not apply to the newly relied upon reference.
Claim Objections
Claim 1 has been amended to recite structure linked to the user computing device. However, after said structure, the claim recites “an Automated Transfer Software Core stored in the non-transitory memory and executable by the one or more processors, the Automated Transfer Software Core being configured to…” carry out the claim limitations thereafter. The software core is software and cannot perform functions unless it is executed by a processor. The claim should instead recite that the one or more processors executes the store ATSC, causing the one or more processors to… Because the above proposed amendment would overcome the issue, no interpretation under 35 USC 112(f) is issued. Likewise, no rejection under 35 USC 112(a) and 112(b) is deemed necessary.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, and 6-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is directed to “a non-intermediary system for automated, direct transfer of digital assets between a plurality of independently- operated peer digital asset platforms, the system comprising: a) a user computing device having one or more processors and a non-transitory memory; b) an Automated Transfer Software Core stored in the non-transitory memory and executable by the one or more processors, the Automated Transfer Software Core being configured to… monitor the status of the outbound transfer using the first protocol and monitor the status of the confirmation using the second protocol, thereby completing the transfer of the digital asset between the source peer and the destination peer without requiring an intermediary entity to hold or transfer the digital asset.” Emphasis added.
The Specification discloses a system 10, including core 22 and system 10 in communication with peers, such as first and second peer. System 10 and core 22 are standalone from first and second peer. Also, system 10 including core 22 are not within or installed within the first peer or second peer. As a result, it is not known how a user device can comprise the claimed ATSC (core). Also, it is not known how assets can be transferred between peers “without requiring an intermediary entity to hold or transfer the digital asset” when the Specification show that the system 10 including core 22 is required to transfer assets between peers. Based on at least the above issues, it is not known how the claimed scope is to be executed by one of ordinary skill in the art. Dependent claims are rejected under the same rational and for mere dependency on the rejected claims.
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, and 6-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-3, and 6-7 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1-3, and 6-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of transferring assets and monitoring the transfer of the assets without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial or legal interactions including sales activities or behaviors and business relations. The claimed scope clearly captures a transaction settlement for an asset between peers or users. This settlement emphasizes the foundation of commercial interactions, business / sales activities and relations.
Claim 1, recites:
A non-intermediary system for automated, direct transfer of digital assets between a plurality of independently- operated peer digital asset platforms, the system comprising:
a) a user computing device having one or more processors and a non-transitory memory;
b) an Automated Transfer Software Core stored in the non-transitory memory and executable by the one or more processors, the Automated Transfer Software Core being configured to:
i) store a plurality of distinct, pre-programmed Application Programming Interface (API) protocols, wherein each protocol corresponds to a proprietary API of a specific, independent peer digital asset platform (a "peer");
ii) receive a single user-defined transfer request specifying a digital asset, a source peer, a destination peer, and an amount;)
iii) based on the user-defined transfer request, execute a first protocol from the stored plurality of protocols corresponding to the source peer to initiate an outbound transfer of the digital asset;
iv) execute a second protocol from the stored plurality of protocols corresponding to the destination peer to obtain a confirmation of the received digital asset; and
v) monitor the status of the outbound transfer using the first protocol and monitor the status of the confirmation using the second protocol, thereby completing the transfer of the digital asset between the source peer and the destination peer without requiring an intermediary entity to hold or transfer the digital asset.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a user computing device having one or more processors and a non-transitory memory; an Automated Transfer Software Core stored in the non-transitory memory and executable by the one or more processors, and the Automated Transfer Software Core being configured to. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as storing data, receiving data executing an actions and monitoring data/analyzing data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. 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 additional elements add insignificant extra-solution activity to the judicial exception. Likewise, the claims merely link the use of the judicial exception to a particular technological environment or field of use.
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. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The claims are not patent eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, and 6-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2023/0186285 to Mawson et al. (Mawson).
Mawson teaches all of the claim limitations:
A non-intermediary system for automated, direct transfer of digital assets between a plurality of independently- operated peer digital asset platforms, the system comprising [Abstract, Paragraphs 0226-0230]:
a)
b) an Automated Transfer Software Core stored in the non-transitory memory and executable by the one or more processors, the Automated Transfer Software Core being configured to (APIs or SDKs can be utilized with the user device) [Abstract, Paragraphs 0226-0228 and 0258]:
i) store a plurality of distinct, pre-programmed Application Programming Interface (API) protocols, wherein each protocol corresponds to a proprietary API of a specific, independent peer digital asset platform (a "peer") (peer-to-peer payments between users using any form of currency and including adding a currency that a user desires) [Paragraphs 0042-0046, and 0080 and 0210-0214];
ii) receive a single user-defined transfer request specifying a digital asset, a source peer, a destination peer, and an amount [Paragraphs 0080-0090];
iii) based on the user-defined transfer request, execute a first protocol from the stored plurality of protocols corresponding to the source peer to initiate an outbound transfer of the digital asset (determine best API and cryptocurrency to use for the peer-to-peer transfer) [Paragraphs 0080-0090];
iv) execute a second protocol from the stored plurality of protocols corresponding to the destination peer to obtain a confirmation of the received digital asset [Paragraphs 0080-0090]; and
v) monitor the status of the outbound transfer using the first protocol and monitor the status of the confirmation using the second protocol, thereby completing the transfer of the digital asset between the source peer and the destination peer without requiring an intermediary entity to hold or transfer the digital asset [Paragraphs 0064-0065, 0080-0090 and 0119].
Per claim 2, Mawson teaches wherein the Automated Transfer Software Core is further configured to process transfer requests for: a) internal transfers of the digital asset between different accounts on the same peer; and b) external transfers of the digital asset between a first peer and a second peer [Paragraphs 0042-0046, and 0080-0090 and 0210-0214].
Per claim 3, Mawson teaches wherein the Automated Transfer Software Core is further configured to: a) receive a user defined rule specifying an even distribution of the digital asset across a selected subset of the plurality of peers; and b) automatically initiate a sequence of non-intermediary transfers between the selected subset of peers to maintain the even distribution in accordance with the user-defined rule. [Paragraphs 0042-0046, and 0080-0090 and 0210-0214].
Per claim 6, Mawson teaches wherein the digital assets are cryptocurrency [Paragraphs 0080-0083].
Per claim 7, Mawson wherein the digital assets are digital fiat currency [Paragraphs 0080-0083].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
PGPUB 2021/0383334 to Krasnyansky teaches Applicant’s claimed scope. Krasnyansky teaches approaches are described for contingent transfers of value. A configuration record for an account associated with a virtual wallet is obtained. The configuration record is used to evaluate at least one virtual wallet of an owner account. Based on the configuration record, keys or other secret data and an authorization scheme can be determined and applied to virtual wallets that are part of a contingent contract. Thereafter, the virtual wallets can be utilized to exchange tangible and virtual digital currencies in various financial transactions, banking operations, and other asset exchanges and/or utilized for another purpose such as exchanging an irreversible transfer of value as in a virtual currency to a reversible transfer of value as in fiat currency or a financial instrument.
THIS ACTION IS MADE FINAL. 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 EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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