DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 3/25/26.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1-3 are currently pending.
Claims 1, 3 are elected without traverse.
Claim 2 is withdrawn.
Claims 1, 3 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant’s election without traverse of claims 1, 3 in the reply filed on 3/25/26 is acknowledged.
Claim 2 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention. Election was made without traverse in the reply filed on 3/25/26.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claims 1, 3, the system is directed to software per se as it consists of a communication channel and a software wallet. The Specification lacks a lexicographic definition of a communication and a wallet. Furthermore, one of ordinary skill in the art at time of invention would have interpreted the aforementioned components as software (channel: a means of communication or expression1; wallet: an application or device used to store and manage cryptocurrency2). According to MPEP 2106 (I), however, there are four categories of invention: process, machine, article of manufacture, and composition of matter. Therefore, as "software" is neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
As per claims 1, 3, the limitation “a communication” renders the scope of the claim indefinite because it is incomplete and is not a term in the art. Typically, communications are defined as communication signals or communication channels.
As per claim 1, the limitation “to prove ownership of the private key and thus proof of the enhanced identity information” renders the scope of the claim indefinite because the underlined term lacks antecedent basis. There is no prior instance of an enhanced identity information.
As per claim 3, the limitation “wherein the wallet can send a zero knowledge proof on the communication channel” renders the scope of the claim indefinite because the underlined term lacks antecedent basis. There is no prior instance of a communication channel.
Claim Rejections - 35 USC § 103
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, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20160162897 to Feeney.
As per claims 1, 3, an original embodiment of Feeney teaches:
A cryptocurrency system comprising: a communication; ([0025], “The systems may be deployed in a number of ways, including on a stand-alone computing device, a set of computing devices working together in a network, or a web application. Persons of ordinary skill in the art will recognize a web application as a particular kind of computer program system designed to function across a network, such as the Internet.”)
a wallet with a paycode and associated private key; paycode associated to enhanced identity; ([0058], “In some embodiments, the owner of crypto-currency keeps his or her currencies in a crypto-currency wallet, which is defined as any facility that stores crypto-currency. The storage of crypto-currency may be the storage of the public and private keys associated with crypto-currency received by the owner. In some embodiments, the user stores the crypto-currency in a virtual wallet, which is located at what amounts to a “crypto-currency bank”.”; [0086], “In other embodiments, the computing device 202 requires the first entity to submit an additional item of secret information, such as a personal identification number (“PIN”), a password, or information unlikely to be known by another party.”)
The original embodiment of Feeney does not explicitly teach, but an alternative embodiment of Feeney teaches:
where an entity can send a zero knowledge proof on a communication channel to prove ownership of the private key and thus proof of the enhanced identity information. ([0080]-[0081], “In some embodiments, authentication involves performing a zero-knowledge proof. In one embodiment, a zero-knowledge proof is a method by which one party (the prover) can prove to another party (the verifier) that a given statement is true without conveying any info, apart from the fact that the statement is indeed true; as a result, the verifier (or another party who has recorded the proof) is unable to perform the zero-knowledge proof in turn. In other embodiments, the first entity proves that the first entity originated the transaction by signing or decrypting data as described above using the private key used to sign the crypto-currency transaction 204.”)
Applicant is reminded that optional or conditional elements do not narrow the claims because they can always be omitted. Specifically, the limitation “where the wallet can send a zero knowledge proof on a communication channel to prove ownership of the private key and thus proof of the enhanced identity information” does not require performing the function of sending a zero knowledge proof since the limitation states that the wallet is merely capable of sending a zero knowledge proof. See MPEP 2106 II C: “Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation”; In re Johnston, 435 F.3d 1381, 77 USPQ2d 1788, 1790 (Fed. Circ. 2006): (“As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted.”); Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.").
One of ordinary skill in the art would have recognized that applying the known technique of the alternative embodiment of Feeney to the known invention of the original embodiment of Feeney would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such zero knowledge proof features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the wallet to send a zero knowledge proof on a communication channel to prove ownership of the private key and thus proof of the enhanced identity information results in an improved invention because applying said technique ensures that the identity of the wallet’s user can be authenticated without exposing any additional information, thus improving the overall security of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20210224795 to Song discloses an escrow non-face-to-face cryptocurrency transaction device and method using a phone number. The device and method includes: providing a phone number wallet that uses a phone number of a user as a login ID; using the phone number wallet having an electronic wallet address of a phone number system so as to remit and deposit cryptocurrency stored in the phone number wallet in an escrow virtual wallet of an escrow virtual wallet address generated for a one-time use in a one-time escrow virtual wallet; transmitting, to a remitter, escrow authentication information that enables a secure connection to the escrow virtual wallet and enables withdrawal authentication; and remitting the cryptocurrency deposited in the escrow virtual wallet address to an electronic wallet address of a recipient who inputs the escrow authentication information directly received from the remitter, so as to withdraw the cryptocurrency.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619
1 “Channel.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/channel. Accessed 26 May. 2026.
2 “Wallet.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/wallet. Accessed 26 May. 2026.
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