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 .
Acknowledgements
The reply filed 10/30/2025 is acknowledged. Claims 1, 11, and 21 have been amended. Claims 1-21 are pending and presented for examination.
Response to Arguments
Applicant’s arguments, see pg. 7, filed 10/30/2025, with respect to the 35 U.S.C. 112(b) rejection of claims 3 and 13 set forth in the Non-Final Rejection 07/31/2025 have been fully considered. The 35 U.S.C. 112(b) rejection of claims 3 and 13 has been withdrawn. Examiner notes that claim 1 does not actually execute the transaction because “accessing the wallet to execute the transaction” is not positively claiming the executing of the transaction. In other words, one can access a wallet with the intention of executing a transaction, e.g. paying for an item, but not actually pay for such item since the claim is not positively claiming the act of executing. Therefore, claims 3 and 13 shall be interpreted to merely provide context to the type of request received, which is considered definite, but they are not interpreted to be claiming the act of withdrawing of the digital assets.
Applicant’s amendment to claim 21 has overcome the 35 U.S.C. 101 rejection (“not one of the four statutory categories”) of claim 21 set forth in the Non-Final Rejection 07/31/2025. Therefore, the 35 U.S.C. 101 rejection of claim 21 pertaining to “not one of the four statutory categories” has been withdrawn.
Applicant's arguments with respect to the 35 U.S.C. 101 rejection of claims 1-21, filed 10/30/2025, have been fully considered, but they are not persuasive.
The headings used in Applicant’s remarks 10/30/2025 shall be presented below to ensure every relevant remark is addressed. Applicant’s remarks state -
The Problem and the Claim Solution
In the present case, the claims are directed to a technical solution to problems arising in the field of blockchain-based systems, including security concerns involved in accessing wallets on a blockchain network.
The claimed methods and systems provide a solution to these problems, namely sharding a private key into multiple portions, each portion independently encrypted.”
In response to the Applicant’s remarks, the claimed invention does not claim “sharding a private key into multiple portions, each portion independently encrypted.” To rely on such solution, which is not being claimed, to conclude that the claims are directed to a technical solution to problems arising in the field of blockchain-based systems is erroneous. Neither the independent nor the dependent claims include language that suggests sharding a private key or independently encrypting each portion of the private key. Therefore, the remarks cannot be persuasive.
Step 2A, Prong 1 – The Claims are Not Directed to an Abstract Idea
Applicant submits that the claims are eligible under the first prong of the Step 2A analysis because the features recited in the claims are not directed to an abstract idea and the Examiner has not established that the features recited in the claims fall within any of the groupings identified in the M.P.E.P.
Here, the claimed features are an improvement to computer functionality (e.g., by independently encrypting different shards of a private key), and not merely commercial or legal interactions, contrary to the Examiner's assertion.
Applicant submits that the claims do not recite merely "commercial or legal
interactions," as asserted by the Examiner, but instead recite specific technical features
related to a specific encryption scheme for independently encrypting different shards of a
private key…
Applicant's claims clearly recite terms of art in software engineering and computer science sufficient to show that the basic focus of the claims is the use of software technology, not to certain methods of organizing human activity. For example, Applicant's claims recite computer-specific software constructs such as "blockchain," "wallet," and "private key." Therefore, the claims are not directed to commercial or legal interactions, and thus are not directed to an abstract idea.
In the present case, the claims recite a specific process for independently encrypting different portions of a private key. This is in contrast to claims found ineligible in Intellectual Ventures Iv. Capital One Fin. Corp., where nothing in the claims indicated what steps were performed other than merely collecting, displaying, and manipulating data in an XML document. Intellectual Ventures I, 850 F.3d 1332 (Fed. Cir. 2017). That is, unlike the claims in Intellectual Ventures I, which claimed a result-oriented solution without details of how the result was achieved, the present claims recite specific steps by which a private key may be sharded into different portions that are then independently encrypted to enhance the security of the blockchain system.
In response to the Applicant’s remarks, the identified grouping can be found on pg. 4 of the Non-Final Rejection 07/31/2025. The bolded claimed limitations were grouped as commercial or legal interactions in the form of sales activities or behaviors under certain methods of organizing human activity. The claimed invention does not recite any limitations related to a specific encryption scheme for independently encrypting different shards of a private key. Furthermore, mere recitation of software constructs does not preclude the limitations from being identified as an abstract idea. The elements, such as “wallet” and “private key,” were reasonably included in the recited abstract idea because they can be reasonably manipulated in the context of a sales activity/behavior, i.e. using a private key to access a wallet. MPEP 2106.04(a)(2), subsection II states – “Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.” Therefore, inclusion of software, hardware, and/or a computer does not preclude the limitation from reciting an abstract idea. The element “blockchain” was identified as an additional element on pg. 5 of the Non-Final Rejection 07/31/2025 and not part of the abstract idea. For purposes of brevity, please see below for the patent eligibility analysis regarding the element “blockchain.”
As previously stated, the claimed invention is not claiming sharding a private key into different portions and independently encrypting each portion. Therefore, the remarks related to the sharding and encryption are not relevant to what is being claimed and cannot be persuasive.
Step 2A, Prong 2 – The Claims Integrate Any Alleged Abstract Idea Into a Practical Application
Applicant submits that at least the following features of the claims integrate any alleged abstract idea into a practical application because they reflect an improvement to other technology or technical field.
For example, the claims reflect a technical improvement in the field of blockchain
security…blockchains are susceptible to unique security threats based on unauthorized access to the private key. To counteract these blockchain-based security concerns, the claimed invention includes techniques for independently encrypting different portions of a private key.
Applicant's claims are analogous to those held patentable in Ex parte Israel. For example, just as the claims of Ex parte Israel "improve[] the harvesting and performance of entity extraction rules to support visualizations, analyses, and other event data processing operations," id., Applicant's claimed solution improves the function and security of blockchain systems by, for example, independently encrypting different portions of a private key "such that a compromise of the keys involved in encrypting one portion of the private key does not expose the entire private key.
Here, blockchains are a unique type of technical construct generally used in decentralized systems. Specification ¶ [0003]. Thus, the present claims do not merely use computers in their ordinary capacity, but rather provide an improvement to blockchain systems that integrates the claims into a practical application, as discussed above.
In response to the Applicant’s remarks, as previously stated, the claimed invention is not claiming sharding a private key into different portions and independently encrypting each portion. Therefore, the remarks are not relevant to what is being claimed and cannot be persuasive. Furthermore, use of a blockchain has been generically recited such that it amounts to no more than general use of a data structure. Therefore, generically reciting a data structure cannot possibly be an improvement to blockchain systems.
Step 2B – The Claims Recite an Inventive Concept that Amounts to Significantly More than an Abstract Idea
Similar to BASCOM, the present claims recite non-conventional and non-generic methods and systems, in this case for independently encrypting different portions of a private key, which improve access to blockchain wallets and the technical field of blockchain security. For example, the Specification describes how Applicant's claimed solution improves blockchain security by encrypting different portions of a private key. Specification ¶ [0029]. By independently encrypting the different portions, "a compromise of the keys involved in encrypting one portion of the private key does not expose the entire private key, and thus the wallet associated with the private key, to a malicious party."
In response to the Applicant’s remarks, as previously stated, the claimed invention is not claiming sharding a private key into different portions and independently encrypting each portion. Therefore, the remarks are not relevant to what is being claimed and cannot be persuasive.
Claims 1-21 stand rejected under 35 U.S.C. 101.
Applicant's arguments filed 10/30/2025 with respect to the 35 U.S.C. 103 rejection(s) have been fully considered, but they are not persuasive.
Applicant’s remarks state –
As discussed above, the "quorum" in Suurkivi is used to identify whether enough operator devices have decrypted their SEKs (alternatively, that enough SEKs have been decrypted). Suurkivi ¶¶ [0070], [0079], [0090]. But, in Suurkivi, the number of SEKs decrypted has nothing to do whether the transaction is legitimate. Rather, in Suurkivi, it is merely based on whether enough operator devices responded to the request to decrypt. Therefore, Suurkivi does not teach "verifying that the transaction is a legitimate transaction to be executed on the blockchain" and "based on verifying that the transaction is a legitimate transaction to be executed on the blockchain, recovering a second portion of the private key, wherein the second portion of the private key is different from the first portion of the private key" as recited in Claim 1 and similar features recited in Claims 11 and 21.
In response to the Applicant’s remarks, the claimed invention does not specify what is considered a legitimate transaction. Therefore, under the broadest, most reasonable interpretation, a legitimate transaction is interpreted to be any transaction that conforms to law(s) or rule(s). Suurkivi et al. U.S. 2022/0164790 (herein as “Suurkivi”) discloses in [0090] – “the cryptographic key storage and signature platform 210 may compare a number of decrypted SEKs, received at step 321, to the quorum threshold” for the requested transaction, see at least Figs. 3C-3E. The number of decrypted SEKS meeting or exceed the quorum threshold value is a rule to which the requested transaction must conform. Therefore, the remarks are not persuasive and Suurkivi reasonably reads on the claimed limitations.
As discussed above, Suurkivi's decrypted SEKs are used to decrypt the key shares, and the key shares are used to reconstruct the signing key. Suurkivi, Abstract, ¶¶ [0005], [0091]-[0092]. In other words, the SEKs and the key shares in Suurkivi are not two different portions of the (signing) key-the SEKs and the key shares are the same, just at different levels of encryption. Thus, Suurkivi does not teach "wherein the second portion of the private key is different from the first portion of the private key" as recited in Claims 1, 11, and 21.
In response to the Applicant’s remarks, Suurkivi’s decrypted SEK [0089] was identified as “a first portion of a key.” Suurkivi’s decrypted encrypted shares using the corresponding decrypted SEK [0091] was identified as “a second portion of the key.” Since the decrypted encrypted share is decrypted using a corresponding decrypted SEK, the decrypted encrypted share, i.e. a second portion of the key, is different from the decrypted SEK, i.e. a first portion of the key. Even if they are at different levels of encryption as asserted by the Applicant’s remarks, they are still different. Therefore, the remarks are not persuasive and Suurkivi reasonably reads on the claimed limitations.
Applicant’s remarks directed to Berengoltz et al. U.S. 2021/0224797 are moot since Suurkivi was previously used to disclose the claimed features in question and the remarks directed against Suurkivi are not persuasive.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-21 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. Independent claims 11 and 21 recite similar distinguishing features as claim 1, therefore the following eligibility analysis shall apply to claims 1, 11, and 21. The judicial exceptions recited in claim 1 are identified in bold below:
A computer-implemented method, comprising:
receiving, from a key management system, a request to execute a transaction on a blockchain, the request including a first portion of a private key associated with a wallet from which the transaction is to be performed;
verifying that the transaction is a legitimate transaction to be executed on the blockchain;
based on verifying that the transaction is a legitimate transaction to be executed on the blockchain, recovering a second portion of the private key, wherein the second portion of the private key is different from the first portion of the private key; and
accessing the wallet to execute the transaction on the blockchain based on the first portion of the private key and the second portion of the private key.
Under the broadest reasonable interpretation, A-E recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as commercial or legal interactions in the form of sales activities or behaviors. Receiving a request to execute a transaction, verifying the transaction, recovering a portion of a private key, and accessing a wallet to execute the transaction based on the private key are analogous to sales activities/behaviors that involve using credentials.
Claims 1, 11, and 21 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
In limitations B-E, merely reciting “on a/the blockchain” is general usage of a data structure. When the additional element, “blockchain,” is considered individually and as an ordered combination with the abstract idea, the claims as a whole amount to no more than mere steps to implement an abstract idea on a data structure. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In limitation B, “a key management system” has been generically recited. When the additional element, “a key management system,” is considered individually and as an ordered combination with the abstract idea, the claims as a whole amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Furthermore, claims 11 and 21 recite “a processing system,” “at least one memory having executable instructions stored thereon,” “one or more processors configured to execute the executable instructions to cause the processing system to,” and “a non-transitory computer-readable medium having executable instructions stored thereon which, when executed by one or more processors, performs an operation comprising” as additional elements. These additional elements are generic computing components and are all recited at a high-level of generality. The abstract idea in limitations A-E are merely software instructions that as an ordered combination with the additional elements amount to a computer that is programmed to carry out the abstract idea. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, claims 11 and 21 amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These 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.
Claims 1, 11, and 21 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component/data structure. Mere instructions to apply an exception using a generic computer component/data structure cannot provide an inventive concept.
Claims 1, 11, and 21 are not patent eligible.
Dependent Claims
Dependent claims 2 and 12 are directed to forwarding information specifying parameters of the transaction. The claims merely elaborate on the abstract idea identified above and do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 3-4 and 13-14 are directed to the request. The claims merely elaborate on the abstract idea identified above and do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 5 and 15 are directed to validating a signature associated with the request. The claims merely elaborate on the abstract idea identified above and do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 6-7 and 16-17 are directed to verifying the transaction. The claims merely elaborate on the abstract idea identified above and do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 8 and 18 are directed to decrypting the second portion of the private key. The claims introduce an additional abstract idea: mathematical concepts. Decrypting a private key is a mathematical calculation. The claims do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception(s).
Dependent claims 9 and 19 are directed to concatenating the first portion and second portion of the private key, generating, signing, and committing the transaction record. The claims introduce an additional abstract idea: mental processes. Concatenating the portions into a concatenated key can be performed by a human using a pen and paper. Generating, signing, and committing the transaction record elaborate on the abstract idea of sales activities/behaviors because they are analogous to creating a receipt of a transaction. The claims do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception(s).
Dependent claims 10 and 20 are directed to the key management system. Merely reciting that the “key management system” is associated with a centralized platform is considered generically recited because it is no more than generally linking the use of the judicial exception to a particular technological environment or field of use. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-21 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claims 1-4, 8-9, 10-14, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Suurkivi et al. U.S. 2022/0164790 (herein as “Suurkivi”) in view of Berengoltz et al. U.S. 2021/0224797 (herein as “Berengoltz”).
Re Claim 1, Suurkivi discloses a computer-implemented method, comprising:
receiving, from a key management system, a request to execute a transaction on a blockchain [0073] – “at step 310, the cryptographic key storage and signature platform 210 may receive a transaction request,” “may receive the transaction request from the routing system 230,” the request including a first portion of a […] key associated with a wallet from which the transaction is to be performed [0089] – “A step 321, the cryptographic key storage and signature platform 210 may receive the decrypted SEKs (i.e. a first portion of a key) sent at step 320,” “may receive the decrypted SEKs from the participant storage system(s) 220,” the routing system 230 and the participant storage system(s) 220 are collectively analogous to a key management system;
verifying that the transaction is a legitimate transaction to be executed on the blockchain [0090] – “the cryptographic key storage and signature platform 210 may compare a number of decrypted SEKs, received at step 321, to the quorum threshold”;
based on verifying that the transaction is a legitimate transaction to be executed on the blockchain, recovering a second portion of the […] key, wherein the second portion of the private key is different from the first portion of the private key [0091] – “At step 323, based on or in response to identifying that the number of decrypted SEKs (i.e. a first portion of a key) meets or exceeds the quorum threshold value (i.e. verified), the cryptographic key storage and signature platform 210 may decrypt each of the encrypted shares (i.e. recovering a second portion of the key) using their corresponding decrypted SEK. In doing so, the cryptographic key storage and signature platform 210 may restore the cleartext shares that may be used to reconstruct the sensitive information,” the encrypted shares are encrypted key shares, see at least Fig. 3A, 303; Fig. 3E, 324, [0122] – reconstruct cryptographic signing key; and
accessing the wallet to execute the transaction on the blockchain based on the first portion of the […] key and the second portion of the […] key [0096] – “at step 326, the cryptographic key storage and signature platform 210 may use the sensitive information (which may, e.g., be a CSK) to sign one or more blockchain messages corresponding to the transaction request. In doing so, the cryptographic key storage and signature platform 210 may authorize the requested transaction, which may, in some instances, cause the requested amount of cryptocurrency to be transferred from the first account to the second account,” [0098] – “the first and/or second accounts (which may, e.g. be cryptocurrency hot wallets).”
However, Suurkivi does not expressly disclose the following limitations in italics
a first portion of a private key,
a second portion of the private key.
Berengoltz discloses a system and method for securing crypto-asset transactions. Specifically, Berengoltz discloses
a first portion of a private key [0037] – “the private key of a wallet is sharded, i.e., split up into smaller parts,” each part is analogous to a portion,
a second portion of the private key [0037] – “the private key of a wallet is sharded, i.e., split up into smaller parts,” each part is analogous to a portion, having multiple parts suggests there are at least a first and a second portion of the private key.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Suurkivi’s hot wallet security with the teachings of using a first portion and second portion of a private key in Berengoltz. The combination teaches verifying and executing transactions based on private key shards (portions). One would be motivated to make this combination because using portions of a private key would reduce the risk of the key being comprised by a malicious entity, thereby preventing unauthorized access to a wallet and funds, and enhancing security Berengoltz, [0006], [0022].
Re Claim 2, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach further comprising forwarding, to the key management system from a client device, information specifying parameters of the transaction, wherein the request to execute the transaction is received based on forwarding the information specifying the parameters of the transaction Suurkivi, [0073] – “the cryptographic key storage and signature platform 210 may receive the transaction request from the routine system 230 (which may, e.g., have received the transaction from a user or client device such as client computers 107 or 109),” “For example, the cryptographic key storage and signature platform 210 may receive a request to authorize a transfer of an amount of cryptocurrency from the first user account to a second user account,” thereby suggesting the transaction request includes parameters such as amount of cryptocurrency, first user account, and second user account.
Re Claim 3, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach wherein the request to execute the transaction comprises a request to withdraw digital assets stored in the wallet to an external resource based on signing a transaction record based on the first portion of the private key and the second portion of the private key Suurkivi, [0073] – “a request to authorize a transfer of an amount of cryptocurrency from the first user account (i.e. withdraw digital assets) to a second user account (i.e. external resource),” [0096] – “may use the sensitive information (which may, e.g., be a CSK), to sign one or more blockchain messages corresponding to the transaction request,” CSK is the cryptographic signing key.
Re Claim 4, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach wherein the request to execute the transaction on the blockchain is signed based on the first portion of the private key Suurkivi, [0096] – “may use the sensitive information (which may, e.g., be a CSK), to sign one or more blockchain messages corresponding to the transaction request,” CSK is the cryptographic signing key.
Re Claim 8, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach wherein recovering the second portion of the private key comprises decrypting the second portion of the private key based on credentials associated with a transaction gateway through which the transaction is verified Suurkivi, [0091] – “At step 323, based on or in response to identifying that the number of decrypted SEKs meets or exceeds the quorum threshold value (i.e. verified), the cryptographic key storage and signature platform 210 may decrypt each of the encrypted shares (i.e. recovering a second portion of the key) using their corresponding decrypted SEK (i.e. based on credentials),” Fig. 3D – the decrypted SEK is associated with participant storage system(s) 220, [0035] – “Participant storage system(s) 220 may be or include one or more computing devices that may be used to facilitate sensitive information (i.e. a transaction gateway through which the transaction is verified).”
Re Claim 9, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach wherein accessing the wallet to execute the transaction comprises:
concatenating the first portion of the private key and the second portion of the private key into a concatenated key Suurkivi, Fig. 3E, 324 – Reconstruct Cryptographic Signing Key, [0051] – “may split the sensitive information (e.g. cryptographic signing key, or CSK) using Shamir’s secret sharing, Blakely’s scheme, the Chinese remainder theorem, and/or other secret sharing schemes…may split the sensitive information using t of n sharding, in which at least t shards of the original n shards may be needed to reconstruct the sensitive information,” reconstructing is analogous to concatenating because the CSK is reconstructed using t shards, i.e. portions, such that the required number of t shards are “linked” or “combined” together to reconstruct the CSK;
generating a transaction record identifying assets to be transferred from the wallet to a destination wallet Suurkivi, [0096] – “one or more blockchain messages corresponding to the transaction request,” thereby suggesting the blockchain message must be generated since it corresponds to the transaction request, “the requested transaction…cause the requested amount of cryptocurrency to be transferred from the first account (i.e. the wallet) to the second account (i.e. destination wallet).”
signing the transaction record using the concatenated key Suurkivi, [0096] – “may use the sensitive information (which may, e.g., be a CSK) to sign one or more blockchain messages corresponding to the transaction request,” [0092] – “reconstruct the sensitive information,” therefore, the CSK used to sign the blockchain message, i.e. transaction record, is the reconstructed CSK; and
committing the signed transaction record to the blockchain Suurkivi, [0096] – “In doing so (signing one or more blockchain messages), the cryptographic key storage and signature platform 210 may authorize the requested transaction, which may, in some instances, cause the requested amount of cryptocurrency to be transferred from the first account to the second account,” thereby committing the signed transaction record to the blockchain.
Re Claim 10, Suurkivi in view of Berengoltz teach the method of Claim 1, and Suurkivi in view of Berengoltz further teach wherein the key management system comprises a system associated with a centralized platform through which owners of the wallet perform transactions on the blockchain Suurkivi, [0029] – the participant storage system(s) 220 and routing system 230 are collectively analogous to a key management system, and they are associated with the cryptographic key storage and signature platform 210, which may be centralized [0097] and authorizes cryptocurrency transactions [0030].
Re Claims 11-14, and 18-20, they are the system claims of method claims 1-4, and 8-10, respectively. They recite similar distinguishing features as the method claims. Furthermore, Suurkivi discloses that the invention can be performed by one or more processors that executes instructions stored in a memory [0123]. Therefore, claims 11-14, and 18-20 are rejected for the same reasons above.
Re Claim 21, it is the non-transitory computer-readable medium claim of method claim 1. It recites similar distinguishing features as the method claim. Furthermore, Suurkivi discloses that the invention can be embodied in computer-executable instructions stored on a computer-readable medium and executed by one or more processors [0123]. Therefore, claim 21 is rejected for the same reasons above.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Suurkivi et al. U.S. 2022/0164790 (herein as “Suurkivi”) in view of Berengoltz et al. U.S. 2021/0224797 (herein as “Berengoltz”) as applied to claims 4 and 14 above, and further in view of Zhou et al. Machine English Translation of CN 110969431 A (herein as “Zhou”).
Re Claim 5, Suurkivi in view of Berengoltz teach the method of Claim 4, however, Suurkivi in view of Berengoltz do not explicitly teach further comprising validating a signature associated with the request based on a public key counterpart to the first portion of the private key, wherein the recovering the second portion of the private key is further based on validating the signature associated with the request.
Zhou discloses a safe trusteeship method for blockchain private key. Specifically, Zhou discloses
validating a signature associated with the request based on a public key counterpart to the first portion of the private key, wherein the recovering the second portion of the private key is further based on validating the signature associated with the request pg. 5, 2nd paragraph – “verifying the signature and public key; recovering the symmetric encryption key…; decrypting the ciphertext by using the symmetric encryption key to obtain the private key fragment; and recovering the private key based on a part or all of the private key fragments.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Suurkivi in view of Berengoltz’s hot wallet security with the teachings of verifying a signature and public key to recover the private key fragment in Zhou. The combination teaches recovering a private key fragment based on verification of a signature. One would be motivated to make this combination to improve the robustness of safely securing the private key Zhou, pg. 4, last paragraph.
Re Claim 15, it is the system claim of method claim 5. It recites similar distinguishing features as the method claim. Therefore, claim 15 is rejected for the same reasons above.
Claims 6-7 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Suurkivi et al. U.S. 2022/0164790 (herein as “Suurkivi”) in view of Berengoltz et al. U.S. 2021/0224797 (herein as “Berengoltz”) as applied to claims 1 and 11 above, and further in view of John U.S. 2021/0201322.
Re Claim 6, Suurkivi in view of Berengoltz teach the method of Claim 1, however, Suurkivi in view of Berengoltz do not explicitly teach wherein verifying that the transaction is a legitimate transaction to be executed on the blockchain comprises requesting verification of the transaction from one or more approving parties.
John discloses fraud deterrence for secure transactions. Specifically, John discloses
verifying that the transaction is a legitimate transaction to be executed on the blockchain comprises requesting verification of the transaction from one or more approving parties [0067] – “the information of the token, can be sent by the seller to a third party which is a validation service (i.e. approving party) that issued the token, in order to assure that it is legitimate,” “the information of the token can be sent by the client to a third party which is a validation service that issued the token, which then contacts the seller’s FFT server “browser validation’ module 232 (of Fig. 8) (i.e. one or more approving parties) and verifies that the user or transaction is legitimate.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Suurkivi in view of Berengoltz’s hot wallet security to include the teachings of verifying the transaction using another party in John. The combination teaches verifying transactions using another party before executing them on the blockchain. One would be motivated to make this combination to deter fraud during electronic commerce operations John, [0008].
Re Claim 7, Suurkivi in view of Berengoltz and John teach the method of Claim 6, and Suurkivi in view of Berengoltz and John further teach further comprising identifying the one or more approving parties based on digital assets to be transferred from the wallet via the transaction John, [0008] - [0067] – “the information of the token, can be sent by the seller to a third party which is a validation service (i.e. approving party) that issued the token (i.e. based on digital assets to be transferred), in order to assure that it is legitimate.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Suurkivi in view of Berengoltz’s hot wallet security to include the teachings of verifying the transaction using another party in John. The combination teaches verifying transactions using another party before executing them on the blockchain. One would be motivated to make this combination to deter fraud during electronic commerce operations John, [0008].
Re Claims 16-17, they are the system claims of method claims 6-7, respectively. They recite similar distinguishing features as the method claims. Therefore, claims 16-17 are rejected for the same reasons above.
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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/C.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698