DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the request for continuation filed on August 11, 2026.
Claims 1, 3, 6, 8, 9, 11-14, 16, 18, and 20 have been amended.
Claims 5 and 19 have been canceled.
Claims 21 and 22 have been added.
Claims 1-4, 6-18, and 20-22 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Response to Arguments
Regarding the rejection under 35 U.S.C. § 101, Applicant argues the claims “do not recite a judicial exception.” Remarks at 10. In support of this argument, Applicant points to language in claim 1 and notes that certain claim features “do not relate to any ‘fundamental economic principle,’ ‘commercial or legal interaction,’ ‘market,” ‘contractual relationships,’ etc. for which the courts relate to ‘methods of organizing human activity.’” Id. at 11-12. Applicant asserts that instead, “the claims recite technical data transfer operations conditioned on cryptographic verification.” Id. at 12. However, technology recited in the claim does not preclude the claim from also reciting an abstract idea. The claim as a whole provides a method for transferring value. Specifically, a crypto token is exchanged for fiat. This is both a fundamental economic practice and a commercial interaction. On page 13 of the Remarks, Applicant refers to several claim limitations and asserts that “amended independent claim 1 recites specific technical mechanisms for connecting a custodial token platform to a blockchain address application to enable purchasing fiat using a self-custody wallet using signed transactions and a coordinated execution mechanism, which is not a fundamental economic practice, not a commercial interaction, and not merely ‘exchange of crypto token for fiat.’” However, these are steps that are being performed as part of the value transfer/exchange. Claim 1 does not merely recite a result, but instead recites a multi-step process for executing a value exchange. For example, each step of claim 1, even if it recites technology, is part of the process of exchanging value.
Applicant further argues that the claim limitations shown in page 15 of the Remarks “are not generic computing operations. For example, a connection step activating a separate application to link a custodial token platform and blockchain address application recites a specific technical operation to improve the interfacing between two separate applications. Additionally, using a transaction signed using the private key as a technical precondition for on-chain execution also recites a specific cryptographic verification process used to ensure transaction security.” Remarks at 15-16. However, Applicant is using existing technology to allegedly improve the abstract idea. For example, Applicant has not shown that the technology for interfacing between two separate applications has been improved (as opposed to existing technology being used to interface between two applications). Similarly, Applicant has not shown that technology related to the use of a private key has been improved (as opposed to being used to implement the abstract idea).
Applicant further argues that “the features of amended independent claim 1 recite coordinated on-chain and off-chain transfers, which further describe specific technical processes used to improve the operation of a blockchain address application by allowing a user to perform fiat transactions from the blockchain address application itself, something that would have been previously impossible.” Remarks at 16. However, Applicant has not shown that the application has been improved. Instead, it appears that the use of the application facilitates the on-chain and off-chain transfers.
Applicant further argues that “[t]he claims recite a specific improvement to the technical architecture for performing fiat cashout from a self-custody blockchain application. Prior to the claimed invention, such an exchange could not be performed from the blockchain address application itself and rather required a user to manually navigate multiple applications and services.” Remarks at 16. Applicant quotes paragraph 0010 of the Specification and states that “the claimed invention addresses the technical deficiency of being unable to perform a fiat exchange directly from a self-custody blockchain address using a connection between a custodial token platform and the blockchain address application and a single cryptographically-authenticated request from the blockchain address application to cause both the on-chain transfer and the off-chain fiat transfer.” Id. Applicant asserts that “[t]his is an improvement to the technology itself (e.g., to the computing architecture for cross-platform blockchain-to-fiat exchange) and not merely an application of a known concept to a computer.” Id. However, the problem of a blockchain address application not directly supporting exchanges of crypto for fiat is a business problem. The solution does not include an improvement to the technology but instead the use of technology.
Applicant further argues that FairWarning, which is referenced in the prior Office action, is not applicable. Remarks at 17. However, MPEP 2106.05(f)(2) was quoted for the principle that improvements inherent in the use of technology do not integrate an abstract idea into a practical application.
Applicant further argues that the abstract idea is not merely linked to a blockchain environment and the claims are analogous to those in DDR Holdings. Remarks at 18. Applicant asserts that “the subject matter of amended independent claim 1 is related to the inherent technical problem of a blockchain address application being unable to directly interface with a centralized exchange to perform fiat transfers in combination with transfers from the blockchain address application requiring a signature of the private key of the self-custody address. In other words, due to the inherent technical structure of self-custody wallets, which do not directly interface with centralized fiat exchanges and control their own private keys, the subject matter of amended independent claim 1 solves the technical problem relating to blockchain technologies specifically rather than a ‘business problem,’ as asserted.” Id. However, a modification of a conventional internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, as in DDR Holdings, is different from using existing blockchain technology to perform a new business process.
Applicant further argues that the claims are eligible for the same reason as claim 2 in Example 41. Remarks at 18. Applicant asserts that “the Office Action [did] not recite the full basis on which Example 41 was found eligible. The eligibility of the claim in Example 41 did not turn on the novelty of public-key cryptography itself, but rather on the fact that the claim recited a specific cryptographic mechanism and specifically one that conditioned a technical outcome (e.g., secure transmission between parties who had not previously shared a key) on the application of a specific mathematical and computational process (e.g., the difficulty of factoring large integers). It was the specificity of the technical mechanism, and the way that the mechanism conditioned system behavior, that integrated the judicial exception into a practical application.” Id. at 19. Applicant further argues that “the features of amended independent claim 1 satisfy the same standard [and] recite the specific technical mechanism by which that outcome is achieved.” Id. Applicant also asserts that “the Office Action does not explain why conditioning system behavior on a private key signature is meaningfully different from conditioning secure transmission on the difficulty of factoring large integers.” Id. at 20. However, the claim in Example 41 is using technology to solve a technological problem. For example, the cited abstract idea is a mathematical formula or calculation and, per the background, there was “a need to perform these same security and authentication functions efficiently over a public key system so that information can be shared easily between users who do not know each other and have not shared the key used to encrypt and decrypt the information.” The invention of this example is improving “prior methods for establishing cryptographic communications….” In contrast, the instant claims are addressing a business problem that exchanging crypto for fiat requires multiple applications and manual steps. This problem is addressed using technology, but does not improve the technology.
Applicant further argues that “t]he examiner cannot decline to perform the required well-understood, routine, and conventional (WURC) evaluation and still conclude that the claims lack an inventive concept. Accordingly, the Step 2B analysis set forth in the Office Action is procedurally incomplete and cannot support the rejection.” Remarks at 21. On pages 21-22 of the Remarks, Applicant asserts that the ordered combination is not conventional. However, per MPEP 2106.05(d), whether additional elements are well-understood, routine, or conventional is one consideration. MPEP 2106.05 lists several considerations but does not require evaluation of all considerations.
As such, the rejection is maintained.
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 1-4, 6-18, and 20-22 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-4, 6-15, 21, and 22 which recite a method and, therefore, are directed to the statutory class of process.
Yes, with respect to claims 16-18, which recite a system and, therefore, are directed to the statutory class of machine or manufacture.
Yes, with respect to claim 20, which recites a non-transitory computer-readable medium and, therefore, is directed to the statutory class of manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims (Claims 1-4, 6-15, 21, and 22 are representative) identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. A method for crypto token management, comprising:
receiving, at a blockchain address application, a first user input to connect a user profile at a custodial token platform to the blockchain address application, wherein receipt of the first user input activates an application associated with the custodial token platform or a web browser;
receiving, at the blockchain address application, a second user input to exchange a first amount of a crypto token from the blockchain address application for a second amount of a fiat;
displaying, at a user interface of the blockchain address application after receiving the second user input, an estimation associated with the exchange of the first amount for the second amount;
receiving, at the blockchain address application, a third user input to confirm the estimation; and
transmitting, to the custodial token platform, a request to initiate the exchange, wherein the request comprises a transaction signed using a private key associated with the blockchain address application and the request causes:
execution, based at least in part on the transaction being signed by the private key, of an on-chain transfer of the first amount of the crypto token from a first blockchain address of the blockchain address application to a second blockchain address associated with the custodial token platform, and
execution of an off-chain transfer of the second amount of the fiat from the custodial token platform to an external entity, wherein the off-chain transfer is associated with the user profile at the custodial token platform and the user profile is associated with the blockchain address application based at least in part on the first user input to connect the user profile to the blockchain address application.
2. The method of claim 1, wherein the estimation comprises the first amount of the crypto token, the second amount of the fiat, and one or more fees associated with the exchange.
3. The method of claim 1, further comprising:
transmitting, to the custodial token platform after receiving the second user input, a second request for the estimation, wherein the second request comprises the first amount of the crypto token; and
receiving, from the custodial token platform after transmitting the second request, the estimation, wherein the estimation is displayed after receiving the estimation.
4. The method of claim 1, further comprising:
displaying, prior to receiving the first user input, an option to connect the user profile at the custodial token platform to the blockchain address application, wherein the first user input is received based at least in part on the user profile at the custodial token platform being connected to the blockchain address application.
6. The method of claim 1, further comprising:
displaying, prior to receiving the second user input, an option to input information associated with the external entity; and
receiving a fourth user input comprising a selection of the option to input the information associated with the external entity, wherein receiving the fourth user input causes activation of the application of the custodial token platform, and wherein the second user input is received based at least in part on receiving the information associated with the external entity.
7. The method of claim 1, wherein the estimation is associated with a time duration for which the estimation is valid.
8. The method of claim 7, further comprising:
transmitting, after the time duration and prior to receiving the third user input, a request for an updated estimation to the custodial token platform, wherein the request comprises the first amount of the crypto token; and
displaying, at the user interface of the blockchain address application after obtaining the updated estimation, the updated estimation associated with the exchange of the first amount for the second amount.
9. The method of claim 1, further comprising:
determining whether the first blockchain address of the blockchain address application is associated with the first amount of the crypto token, wherein the request to initiate the exchange is transmitted based at least in part on the first blockchain address being associated with the first amount of the crypto token.
10. The method of claim 1, further comprising:
polling, after transmitting the request to initiate the exchange, a service for a status associated with the exchange; and
displaying the status associated with the exchange based at least in part on the polling, wherein the status comprises one of complete, failed, or pending.
11. The method of claim 1, further comprising:
transmitting, prior to receiving the second user input, one or more application programming interface (API) calls to obtain an indication of one or more crypto tokens eligible for exchange by the first blockchain address at the blockchain address application, information associated with the user profile eligible to receive the second amount of the fiat in accordance with the exchange, or both.
12. The method of claim 11, further comprising:
displaying, via the user interface of the blockchain address application, the indication of the one or more crypto tokens, the information, or both, wherein the second user input is received based at least in part on displaying the one or more crypto tokens, the information, or both.
13. The method of claim 1, further comprising:
transmitting, in response to receiving the second user input, a request to the custodial token platform for the second blockchain address for receiving the first amount of the crypto token at the custodial token platform.
14. The method of claim 1, wherein:
generating the estimation comprises generating an unsigned message, and
the third user input causes generation of one or more signatures for the unsigned message.
15. The method of claim 14, wherein the on-chain transfer of the first amount of the crypto token from the first blockchain address to the second blockchain address is executed based at least in part on the generation of the one or more signatures for the unsigned message.
21. The method of claim 1, wherein:
the blockchain address application does not support direct exchanges of amounts of crypto tokens for fiat amounts; and
the custodial token platform supports direct exchange of amounts of crypto tokens for fiat amounts and cannot generate signatures using a private key associated with the blockchain address application.
22. The method of claim 1, further comprising:
transmitting, to the custodial token platform after receiving the second user input, a request for an estimation associated with the exchange of the first amount for the second amount, wherein the request comprises a field indicating that a balance check associated with the user profile at the custodial token platform is to be skipped based at least in part on the first amount of the crypto token being associated with the first blockchain address of the blockchain address application rather than with the user profile at the custodial token platform.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to an exchange of crypto token for fiat. This type of method of organizing human activity is a fundamental economic practice because it includes a payment and a commercial interaction such as sales activities or behaviors and business relations. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps. For example, only a programmed general purpose computing device (such as a mobile device with an application) is needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Furthermore, the abstract idea is merely being linked to a particular technological environment, i.e., a computing and blockchain environment. Employing existing technology within a computing and blockchain environment to execute the abstract idea, even when limiting the use of the abstract idea to this environment, does not integrate the exception into a practical application or add significantly more. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Nonni, U.S. Patent Application Publication Number 2023/0298034 A1. This reference teaches custodial digital wallets for value transfers.
Agbamu, U.S. Patent Application Publication Number 2024/0346473 A1. This reference teaches on-chain and off-chain banking and payment systems.
Stroke et al., U.S. Patent Number 12,469,015 B2. This reference teaches private network issuance of digital currency.
Cabrera et al., U.S. Patent Number 11,961,136 B2. This reference teaches transfers of internally-custodied digital assets.
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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