DETAILED ACTION
Status of Application
This action is a Final Rejection. This action is in response to the amendment and response filed on April 6, 2026.
Claims 1, 16, and 20 have been amended.
Claims 1-20 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 fall within any of the subcategories of certain methods of organizing human activity. Remarks at 10. However, the claims are directed to an exchange of crypto token for fiat, i.e., a payment transaction, which is an abstract idea as described in the rejection.
Applicant further argues that the claims recite specific technical limitations and none of the claim elements can be performed by a programmed general purpose computing device. Remarks at 12. However, Applicant’s Specification does not describe a particular machine. Rather, the claimed invention could be performed by a programmed general purpose computer. See MPEP 2106.05(b) (“It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008)”).
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.” Remarks at 12. Applicant asserts that the claimed invention “enable[s] a single cryptographically-authenticated request from the blockchain address application to cause both the on-chain transfer and the off-chain fiat transfer, reducing the number of services, operations, and messages required across the system. This 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. at 12-13. Although paragraph 0012 of the Specification discusses reduced processing and resources, it does not improve the technology that is being used. See MPEP 2106.05(f)(2) (“Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).”). See also MPEP 2106.05(a) (“Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: … ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016) ….”).
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 13. However, the instant claims are solving a business problem and not a technical problem.
Applicant further argues that the claims are eligible for the same reason as the claim in Example 41. Remarks at 14. In Example 41, the claim was directed to “secur[ing] private network communications, so that a ciphertext word signal can be transmitted between computers of people who do not know each other or who have not shared a private key between them in advance of the message being transmitted, wherein the security of the cipher relies on the difficulty of factoring large integers by computers.” In contrast, the instant claims are using existing technology to allegedly improve a transaction.
Applicant further asserts that “[t]he examiner does not cite any prior art, court decision, publication, or other evidence establishing that the specific combination of elements recited in amended independent claim 1…is well understood, routine, and conventional. Without such evidence, the Step 2B finding is procedurally deficient and cannot support the rejection.” Remarks at 15. However, the rejection does not assert that the additional elements are well-understood, routine, or conventional. Therefore, Berkheimer evidence is not required.
Regarding the rejection under 35 U.S.C. 103, the rejection has been withdrawn in light of Applicant’s amendments and remarks (see pages 16-20). Even though individual claim features are found in the art, the independent claims as a whole are not obvious in light of the prior art.
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 1-20 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 1-15, which recite a method and, therefore, are directed to the statutory class of process.
Yes, with respect to claims 16-19, 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 1-15 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 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 first user input, an estimation associated with the exchange of the first amount for the second amount;
receiving, at the blockchain address application, a second user input to confirm the estimation; and
transmitting, to a 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 a user profile at the custodial token platform and the user profile is associated with 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 first 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.
5. The method of claim 4, further comprising:
receiving a third user input to connect the user profile at the custodial token platform to the blockchain address application, wherein receipt of the third user input causes activation of one of an application associated with the custodial token platform or a web browser.
6. The method of claim 1, further comprising:
displaying, prior to receiving the first user input, an option to input information associated with the external entity; and
receiving a third user input comprising a selection of the option to input the information associated with the external entity, wherein receiving the third user input causes activation of an application of the custodial token platform, and wherein the first 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 second 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 first request 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 first 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 first 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 first user input, a request to the custodial token platform for the second blockchain address for receiving the first amount of the custodial token platform.
14. The method of claim 1, wherein:
generating the estimation comprises generating an unsigned message, and
the second 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.
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
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 extension fee 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson, can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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