DETAILED ACTION
The following FINAL Office action is in response to Amendment filed on December 8, 2025 for application 18910913.
Acknowledgements
Claims 2, 9 and 16 have been canceled.
Claims 1, 3-8, 10-15, and 17-20 are pending.
Claims 1, 3-8, 10-15, and 17-20 have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
In response to the Terminal Disclaimer filed on 12/08/2025, the double patenting rejection has been withdrawn.
In response to Applicant’s arguments under 35 USC 101, Applicant argues that the claims recite patent eligible subject matter at least by virtue of being a practical application of any alleged abstract idea since the claims specifically recite “selecting, at the second financial institution, a cryptographic key from a plurality of cryptographic keys based on an identity of a first entity and a second entity included in the transfer information; encrypting the electronic transaction record using the cryptographic key; and adding the electronic transaction record encrypted using the cryptographic key to a shared ledger data structure”. Applicant further argues that the claims recite a specific, practical application of performing asset and account transfers between two electronic systems and the claims further provide specific recitations of data structures and computing architecture (e.g., computing nodes associated with the shared ledger data structure).
In response to the Applicant’s arguments under 35 USC 101, Examiner respectfully disagrees as the amended claims continue to recite the concept of transferring accounts or assets between two institutions. The amended claims continue to be grouped within the “certain methods of organizing human activity” grouping of abstract ideas classified under “commercial or legal interactions” as part of a transaction because the claims involve a series of steps for receiving a request from a client to transfer assets, generating a transaction record with asset details, establishing communication, receiving and adding transaction record, informing the other party that the transaction record has been added, a third-party confirms assets were successfully transferred and updating the transaction in database which is a process that deals with commercial or legal interactions because performing transaction and transferring assets between multiple parties is a commercial interaction. Also, the judicial exception is not integrated into a practical application because the additional elements of the claims such as an electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server, merely use a computer as a tool to perform an abstract idea. The specific limitations “selecting, at the second financial institution, a cryptographic key from a plurality of cryptographic keys based on an identity of a first entity and a second entity included in the transfer information; encrypting the electronic transaction record using the cryptographic key; and adding the electronic transaction record encrypted using the cryptographic key to a shared ledger data structure” provides an improvement to the security of the data in the electronic transaction record, however, does little to provide an improvement to the technology such as “electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server”. The use of an electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea.
In response to the arguments under 35 USC 103, the combination of references, specifically, Lingappa, fails to teach or suggest the limitation "selecting, at the second financial institution, a cryptographic key from a plurality of cryptographic keys based on an identity of a first entity of the first financial institution and an identity of the second financial institution included in the transfer information”. After a careful review of the references, Examiner has reduced the number of references being used and removed the Lingappa reference as it was not needed. The primary reference THEKADATH actually discloses the concept or limitation of "selecting, at the second financial institution, a cryptographic key from a plurality of cryptographic keys based on an identity of a first entity of the first financial institution and an identity of the second financial institution included in the transfer information” in paragraph ¶0194 in which the digital asset (“electronic transaction record”) may include public keys associated with the sending institution computer 560, the issuer node computer 565 and/or the administrative node computer 55. THEKADATH discloses that the digital asset may include enterprise IDs which are associated with one or more of these entities, and the recipient node computer 545 may lookup appropriate public keys based on the enterprise IDs. Hence after the lookup using the enterprise IDs, the recipient node computer 545 may then use the public keys included to verify the one or more digital signatures. Examiner considers that the manner of the lookup or retrieval of those public keys using the enterprise IDs is interpreted as selecting a cryptographic key.
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 an abstract idea without significantly more.
In the instant case, claims 1-7 are directed to a method, claims 8-14 are directed to a system and claims 15-20 are directed to a non-transitory computer-readable medium. Therefore, these claims fall within the four statutory categories of invention.
The claims are directed to transferring accounts or assets between two institutions which is an abstract idea. Specifically, the claims recite “presenting a request to transfer to transfer a financial account of a user from a first financial institution to the second financial institution including a form with fields for account identification information and assets; receiving data entered into the form at the second financial institution; based on the receiving initiating a communication session from a second financial institution to a first financial institution; requesting asset and loan details of a user associated with account identification information; receiving asset and loan details of the user associated with the account identification information; generating transaction record identifying the user, assets, and transfer information related to the assets; encrypting the transaction record; adding the electronic transaction record encrypted to a shared database; in response to the adding: transmitting an indication to the first financial institution that the electronic transaction record was added; and transmitting a notification that the shared [database] was updated; and transmitting an account transfer request identifying the first financial institution and the second financial institution” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “commercial or legal interactions” as part of a transaction in prong one of step 2A of the Alice/Mayo test (See MPEP 2106, specifically 2106.04(a)) because the claims involve a series of steps for receiving a request from a client to transfer assets, generating a transaction record with asset details, establishing communication, receiving and adding transaction record, informing the other party that the transaction record has been added, a third-party confirms assets were successfully transferred and updating the transaction in database which is a process that deals with commercial or legal interactions because performing transaction and transferring assets between multiple parties is a commercial interaction. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as an electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server, merely use a computer as a tool to perform an abstract idea. merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of an electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, an electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server perform the steps or functions of the “presenting a request to transfer to transfer a financial account of a user from a first financial institution to the second financial institution including a form with fields for account identification information and assets; receiving data entered into the form at the second financial institution; based on the receiving initiating a communication session from a second financial institution to a first financial institution; requesting asset and loan details of a user associated with account identification information; receiving asset and loan details of the user associated with the account identification information; generating transaction record identifying the user, assets, and transfer information related to the assets; encrypting the transaction record; adding the electronic transaction record encrypted to a shared database; in response to the adding: transmitting an indication to the first financial institution that the electronic transaction record was added; and transmitting a notification that the shared [database] was updated; and transmitting an account transfer request identifying the first financial institution and the second financial institution”. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106, specifically 2106.05), the additional elements of the electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server, to perform the steps amounts to no more than using the electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server to automate and/or implement the abstract idea of transferring accounts or assets between two institutions. As discussed above, taking the claim elements separately the electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server perform the steps of Claim 1. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transferring accounts or assets between two institutions. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of the electronic communication system, electronic transaction record, selecting a cryptographic key from a plurality of cryptographic keys, shared ledger data structure, delivering system, receiving system, computing nodes, application programming interface and an automated customer account transfer server to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe details of how a request to transfer accounts is presented to a user and how a confirmation is received from a third party that a database of broker-dealers was updated to the second financial institution for the financial account of the user and lastly updating a database indicating a transfer of the assets to the first financial institution further elaborating on the abstract idea of transferring accounts or assets between two institutions. The dependent claims recite additional elements such as “a web server of the second financial institution, a user interface on a user device, a blockchain and an application programming interface”, however, they do not integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 of this title, 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, 3-8, 10-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over THEKADATH et al. (US 2019/0289019 A1) in view of Mutschler et al. (US 2002/0069148 A1) and in further view of ZINDER (US 2017/0005804 A1).
Regarding Claims 1, 8 and 15, THEKADATH discloses a method comprising:
receiving, from the user device [over an application programming interface] data entered into the electronic form, at a receiving system of the second financial institution (¶0175)
initiating an electronic communication session from a second financial institution to a first financial institution (Fig. 5; ¶0175 “The sending institution computer 560 may send a transaction request to the issuer node computer”)
requesting, via the electronic communication session, asset and loan details of a user associated with account identification information (¶0177, ¶0265)
receiving, via the electronic communication session, asset and loan details of the user associated with the account identification information (¶0177, ¶0265)
generating an electronic transaction record, the electronic transaction record identifying the user, assets, and transfer information related to the assets (Fig. 5; ¶0175, ¶0265 “the issuer node computer generates a digital asset for the requested transaction that includes suitable information such as digital asset identifier, various user information (e.g., user enterprise ID, address, phone number, email address), destination currency type, the sending currency amount and etc.)
selecting, at the second financial institution, a cryptographic key from a plurality of cryptographic keys based on an identity of a first entity and a second entity included in the transfer information (¶0194)
encrypting the electronic transaction record using the cryptographic key (¶0110, ¶0280)
adding the electronic transaction record encrypted using the cryptographic key to a shared ledger data structure (¶0191)
in response to the adding: transmitting an indication to a delivering system of the first financial institution that the electronic transaction record was added (¶0237)
transmitting a notification to computing nodes associated with the shared ledger data structure that the shared ledger data structure was updated (¶0239)
THEKADATH does not disclose: transmitting an account transfer request to an automated customer account transfer server, the account transfer request identifying the first financial institution and the second financial institution.
Mutschler however discloses:
presenting a user interface on a user device for an electronic request to transfer a financial account of a user from a first financial institution to a second financial institution, the user interface including an electronic form with fields for account identification information and assets (¶0076, ¶0082, ¶0083, ¶0090)
transmitting an account transfer request to an automated customer account transfer server, the account transfer request identifying the first financial institution and the second financial institution (¶0088-¶0089, ¶0107).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of THEKADATH to include transmitting an account transfer request to an automated customer account transfer server, the account transfer request identifying the first financial institution and the second financial institution, as disclosed in Mutschler, in order to electronically negotiating a package of
financial accounts between a customer and a financial institution, and for automatically and electronically fulfilling the negotiated package (see Mutschler ¶0009).
The combination of THEKADATH and Mutschler does not disclose: receiving, from the user device [over an application programming interface] data entered into the electronic form, at a receiving system of the second financial institution.
Zinder however discloses: receiving, from the user device [over an application programming interface] (0050, ¶0052, ¶0077)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of THEKADATH to include receiving, from the user device [over an application programming interface], as disclosed in ZINDER, in order to facilitate the to facilitate increased access to certain types of data contained in the blockchain transaction (see ZINDER ¶0005).
Regarding Claims 3, 10 and 17, THEKADATH discloses after transmitting the indication, receiving confirmation from [the automated customer account transfer server] that a database of broker-dealers was updated to the second financial institution for the financial account of the user; and in response to the confirmation, updating an account database at a receiving system of the second financial institution indicating a transfer of the assets to the first financial institution (¶0239, ¶0281).
Regarding Claims 4, 11 and 18, THEKADATH discloses wherein the shared ledger structure is a blockchain (¶0191)
Regarding Claims 5, 12 and 19, THEKADATH discloses wherein adding the electronic transaction record to the shared ledger data structure includes adding the electronic transaction record to a block of the blockchain, the block including a hash of previous blocks in the blockchain (¶0191).
Regarding Claims 6, 13 and 20, THEKADATH discloses where transmitting the indication to the delivering system that the electronic transaction record was added includes transmitting an identification of the block (¶0237).
Regarding Claims 7 and 14, THEKADATH discloses wherein receiving, via the electronic communication session, asset and loan details of the user associated with the account identification information includes receiving the asset and loan details as encoded in a JavaScript Object Notation format over an application programming interface (Fig. 5; ¶0175 “The sending institution computer 560 may send a transaction request to the issuer node computer”)
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEHRA RAZA whose telephone number is (571)272-8128. The examiner can normally be reached 10AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697