DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 01/12/2026.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 .
Status of Claims
Claims 1, 2, 4, 5, 8, 9, 11, 12, 15-20 have been amended.
No claims have been canceled or added.
Claims 1-20 are currently pending and have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, 8, 14, 15, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 7, 7, 7 of U.S. Patent No. 11170351 (reference patent), respectively, in view of Winklevoss (US 9892460).
The instant claims 1, 8, 15 are different than the reference patent in that the instant claims 1, 8, 15 discloses “determining a math-based currency (“MBC”) account number associated with a customer in response to a request from a customer computing device of the customer to deposit an amount of MBC”. However, Winklevoss discloses this limitation in Col 51 line 60- Col 52 line 33, Col 53 lines 11-13, and Col 54 lines 22-27. Therefore, it would have been obvious to one of ordinary skill in the art to modify the current invention in view of Winklevoss to include this limitation in order to get the information about the origin of the asset transfer.
The instant claims 7 and 14 are different than the reference patent in that the instant claims 7 and 14 discloses “the pooled database stores a plurality of public and private key pairs of a plurality of customers comprising the created private key and public key pair”. However, Winklevoss teaches this limitation in Col 37 lines 23-Col 38 lines 9, Col 27 line 55- Col 28 line 3, and Col 49 line 48-Col 50 line 20. Therefore, it would have been obvious to one of ordinary skill in the art to modify the current invention in view of Winklevoss to include this limitation in order to have a database that managing all the public/private key pairs for the system.
Claims 2, 3, 4, 5, 6, 9, 10, 11, 12, 13, 16, 17, 18, 19, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 4, 5, 6, 8, 9, 10, 11, 12, 2, 3, 4, 5, 6 of U.S. Patent No. 11170351 (reference patent), respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent include all the limitations of the instant application.
Allowable Subject Matter
Claim(S) 1-20 would be allowable if rewritten or amended to overcome the Double Patenting rejection(s) set forth in this Office action.
As per claim 1, the closest prior art of record, Winklevoss (US 9892460) discloses an invention for determining a math-based currency account number associated with a customer in response to a request from a customer computing device of the customer to deposit an amount of MBC, creating a private and public key pair, transfer a transaction in the amount of the MBC to the created key pairs by signing a transaction request with the customer private key, transfer the created private key and public key pair to a pool database, and update a distributed ledger to reflect the deposit. In addition, Hoyos (US 20140337221) discloses an invention for a transaction request including a private key of a customer. The cited prior art of Winklevoss and Hoyos do not teach a recited feature that “the plurality of private and public key pairs being associated with MBC amounts received from a plurality of customers without being associated with MBC account numbers of the plurality of customers”, and no prior art was revealed in Examiner’s search that fairly taught or suggested such a feature. Therefore, as no prior art fairly teaches or suggests each and every element of independent claims 1, 8, and 15, Examiner holds that claims 1-20 are allowable over the prior art.
Response to Arguments
Applicant’s arguments with regard to the Double Patenting rejection have been fully considered but are not persuasive.
The Applicant argues that the amendments of the claim obviate the rejection. The Examiner, respectfully disagrees. The Examiner notes that the claims of the reference patent still include the amended limitation. Accordingly, the Double Patenting rejection will be maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20150332256 to Minor for disclosing:
a computer-based system converts cryptocurrency into a virtual asset. The system includes a user account database server configured to store data of a plurality of user accounts. The stored data pertains to each user account and indicates an accounting of obligations of the system to the user. The system also includes a cryptocurrency account server configured to receive, from a networked device of a user, a transfer of crypto currency, from an external cryptocurrency account. In response to receipt of such a transfer, the cryptocurrency account server is configured to update the data pertaining to the obligations of the system to the user. The system also includes a user interface server configured to receive a request from the user for conversion of cryptocurrency to an asset. In response to receipt of the request, the system updates the data pertaining to the user account of the user.
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 DUAN ZHANG whose telephone number is (571)272-4642. The examiner can normally be reached Mon - Fri 10 AM-5 PM.
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/DUAN ZHANG/Primary Examiner, Art Unit 3699