DETAILED ACTION
Status of Claims
Claims 1-20 are pending. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, filed on 26 September 2024 claims priority from provisional application 63/541,357 filed on 29 September 2023. Accordingly, this application is given priority from 29 September 2023.
Claim Interpretation
Regarding claims 1-20, clauses such as “to execute” and “to transfer” are merely statements of intended use which do not affect the method step of “receive a cryptocurrency transaction instruction”; “to execute” is not explicitly claiming “executing”, “to transfer” is not explicitly claiming “transferring”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. 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. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Gulack, 703F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d1057, ___, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d1267, ___, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). See MPEP § 2111.05.
Claim Objections
Claims 1-20 are objected to because some of the claim language is not consistent with standard claim language. . For example, in the representee limitation:
execute a first cryptocurrency transaction to transfer a cryptocurrency sum to a cryptocurrency vault, the cryptocurrency vault comprising a plurality of predetermined subsets of a plurality of authorized keysets, each keyset comprising at least one key;
terminology such as “a plurality of predetermined subsets of a plurality of authorized keysets, each keyset comprising …” should be written “a plurality of predetermined subsets of a plurality of authorized keysets, wherein each of the plurality of authorized keysets comprises … ” if that is indeed what the Applicant wises to claim. Correction is required.
Claims 1-20 are objected to because much of the language is overly complex and hard to follow. For example, in representative claim 1, the representative limitations:
determine whether the at least one key in the transaction instruction comprises at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period; and
in response a determination that the at least one key in the transaction instruction comprises at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period, execute the second cryptocurrency transaction.
would be better written:
determine whether the at least one key in the transaction instruction comprises at least one key of the plurality of authorized keysets; and
execute the second cryptocurrency transaction.
if that is indeed what the Applicant means to claim. Correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) 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.
Regarding claims 1, 15 and 18, in representative limitation:
determine whether a transaction time of the cryptocurrency transaction instruction is in at least one predetermined time period of a plurality of predetermined time periods, each predetermined subset corresponding to a predetermined subset of authorized keysets of a plurality of predetermined subsets of the plurality of authorized keysets;
the term “each predetermined subset” lacks antecedent basis. It is not clear if Applicant means to recite “each predetermined time period” instead of “each predetermined subset”, or if Applicant means to recite “ a plurality of predetermined subsets, wherein each of the plurality of predetermined subsets corresponds to a predetermined subset of authorized keysets”, or something else.
Claims 13 and 14 contain the trademark/trade names Bitcoin and Ethereum. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe Bitcoin and Ethereum cryptocurrencies and, accordingly, the identification/description is indefinite.
Claims 2-14, 16-17, 19 and 20 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1-14 are directed to a “system” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of performing a currency transaction which is grouped under a commercial interaction which is a method of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
execute a first cryptocurrency transaction to transfer a cryptocurrency sum to a cryptocurrency vault;
receive a cryptocurrency transaction instruction, the cryptocurrency transaction instruction comprising at least one key associated with at least one authorized keyset of the plurality of authorized keysets;
determine whether a transaction time of the cryptocurrency transaction instruction is in at least one predetermined time period of a plurality of predetermined time periods, each predetermined subset corresponding to a predetermined subset of authorized keysets of a plurality of predetermined subsets of the plurality of authorized keysets;
determine whether the at least one key in the transaction instruction comprises at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period; and
in response a determination that the at least one key in the transaction instruction comprises at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period, execute the second cryptocurrency transaction.
Limitations such as:
the cryptocurrency vault comprising a plurality of predetermined subsets of a plurality of authorized keysets, each keyset comprising at least one key
are merely a description of data and does not impose any meaningful limit on the computer implementation of the abstract idea.
Limitations such as:
to execute a second cryptocurrency transaction to transfer at least a portion of the cryptocurrency sum out of the cryptocurrency vault
are merely statements of intended use which do not further limit the claim.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as:
at least one processor circuit; and
at least one memory comprising machine-readable instructions
represent the use of a computer as a tool to perform an abstract idea and/or does no more than apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of performing a currency transaction using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-14 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 2-14 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of performing a currency transaction.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 15-17 otherwise styled as a method, and claims 18-20 styled as a computer readable medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
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 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, 9-15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over James et al (US Pub. No. 20220253842 A1) in view of Huntley (US Pub. No. 20240214228 A1).
Regarding claim 1, 15 and 18, James teaches method, system, and program product relating to modifying a supply of digital asset tokens on an underlying blockchain [0007]. He teaches:
at least one processor circuit – [0329]; and
at least one memory comprising machine-readable instructions – [0329],that, when executed by the at least one processor circuit, cause the at least one processor circuit to:
execute a first cryptocurrency transaction to transfer a cryptocurrency sum to a cryptocurrency vault, the cryptocurrency vault comprising a plurality of predetermined subsets of a plurality of authorized keysets, each keyset comprising at least one key – [0017] ” a first designated key pair… a second designated key pair… first transaction request”;
receive a cryptocurrency transaction instruction to execute a second cryptocurrency transaction to transfer at least a portion of the cryptocurrency sum out of the cryptocurrency vault, the cryptocurrency transaction instruction comprising at least one key associated with at least one authorized keyset of the plurality of authorized keysets – [0017] “a second transaction request”;
determine whether a transaction time of the cryptocurrency transaction instruction is in at least one predetermined time period of a plurality of predetermined time periods… – [0020] “a first threshold amount over a first period of time”, [0021];
determine whether the at least one key in the transaction instruction comprises at least one key from each keyset ….- [0017], [0018] and [0037]; and
in response a determination that the at least one key in the transaction instruction comprises at least one key from each keyset of the predetermined subset of authorized keysets …, execute the second cryptocurrency transaction – [0017].
James does not explicitly disclose:
the predetermined subset of authorized keysets as corresponding to the at least one predetermined time period, each predetermined subset corresponding to a predetermined subset of authorized keysets of a plurality of predetermined subsets of the plurality of authorized keysets
However, Huntley teaches a key management service in order to secure communications with the host machine of a hosted service [0026]. The key management service can be executed to certify the ownership of individual keys [0028]. The key management service could generate and issue a new public private key pair in response to requests for new encryption keys. Key pairs could be issued for a limited duration of time, in which case the key management service could further track the date the keys were issued in order to determine if they are still valid at a future point in time [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify James’s disclosure to include issuing key pairs with a limited duration of time as taught by Huntley in order to independently verify the trustworthiness of the certificate authority or public key service - Huntley [0002].
Regarding claim 4, James teaches at least one customer keyset being associated with a customer, at least one custodian keyset associated with a custodian of the cryptocurrency vault, and at least one third party keyset associated with a third-party – [0017]. Examiner notes that these limitations do not further limit the claim in that they are statements of intended use.
Regarding claim 9, James teaches the at least one third party as comprising an insurer of the cryptocurrency sum – [0576].
Regarding claim 10, James teaches the at least one third party as comprising a trustee of a trust comprising the cryptocurrency sum, and wherein the at least one customer comprises a beneficiary of the trust – [0347].
Regarding claim 11, James teaches the at least one third party as comprising an executor of an estate comprising the cryptocurrency sum, and wherein the at least one customer comprises a beneficiary of the estate – [0269]-[0274].
Regarding claim 12, James teaches the cryptocurrency vault as comprising an escrow account, wherein the at least one custodian comprises an escrow agent, and wherein the at least one customer and the at least one third party comprise parties to a financial transaction comprising a transfer of the cryptocurrency sum – [0575].
Regarding claims 13 and 17, James teaches the cryptocurrency sum as comprising Bitcoin, and the first cryptocurrency transaction and the second cryptocurrency transaction as comprising Bitcoin transactions – [0016].
Regarding claim 14, James teaches the cryptocurrency sum as comprising Ethereum, and the first cryptocurrency transaction and the second cryptocurrency transaction as comprising Ethereum transactions – [0118].
Claims 2, 3 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over James in view of Huntley, in further view of Finlow-Bates (US Pub. No. 20160254910 A1).
Regarding claims 2 and 19, neither James nor Huntley explicitly discloses, in response a determination that the at least one key in the transaction instruction does not comprise at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period, reject the second cryptocurrency transaction.
However, Finlow-Bates teaches computer systems and methods concerned with the revocation of cryptographic keys used in signing data in a shared file or ledger, which is distributed, extended and maintained over a peer-to-peer network [0001]. He teaches revoking, in a key revocation message, any request to append further messages to a shared ledger signed by the private key of a public/private key pair [0013]. He teaches rejecting, by the plurality of network connected devices, transfer of credits of commercial value associated with the public key of the public/private key pair revoked in the key revocation message [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify James’s disclosure to include rejecting the transfer of credits associated with a revoked public/private key pair as taught by Finlow-Bates in order to provide protection in a distributed peer-to-peer system in the absence of a trusted central authority - Finlow-Bates [0007].
Regarding claim 3, neither James nor Huntley explicitly discloses, in response to a determination that the at least one key in the transaction instruction does not comprise at least one key from each keyset of the predetermined subset of authorized keysets corresponding to the at least one predetermined time period, transmitting an alert indication to at least one authorized keyset of the plurality of authorized keysets.
However, Finlow-Bates teaches a key revocation message for a public/private key pair [0010].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify James’s disclosure to include a key revocation message for a public/private key pair as taught by Finlow-Bates because one would have recognized that such messages improves the system and makes the system cost effective.
Claims 5-8, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over James in view of Huntley, in further view of Wu et al (US Pub. No. 20200394176 A1).
Regarding claims 5, 16 and 20, neither James nor Huntley explicitly discloses a determination that the at least one key comprises a first minimum number of customer keys of
the at least one customer keyset, second minimum number of custodian keys of the at least one
custodian keyset, and third minimum number of third party keys of the at least one third party
keyset.
However, Wu teaches systems, methods, and non-transitory computer readable storage media for implementing a scalable, secure, efficient, and adaptable distributed digital ledger transaction network [0007]. He teaches a the ledger transaction system which utilizes access limits (e.g., a threshold number of keys from a group of keys or access limited keys) to provide security protection to digital assets stored at user accounts [0471]. He teaches the minimum number of access keys required by the ledger transaction system as including all access keys from the group of access keys associated with a user account [0476]. He teaches the ledger transaction system implementing digital asset custody features [0699].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify James’s disclosure to include a minimum number of access keys as taught by Wu because one would have recognized that such messages improves the system and makes the system cost effective.
Claims 6-8 are not further emitting of claim 5 in as much as they are merely a repetition of steps.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Martin et al: “OFFLINE STORAGE SYSTEM AND METHOD OF USE”, (US Pub. No. 20190318356 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692