DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Preliminary Amendment filed 19 October 2024 has been received and considered.
Claims 1-15 are pending.
This Action is Non-Final.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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 4 and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 4 and 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 7, 11, 12, 14, and 15are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Anderson et al. (US 20230396456).
As per claims 1 and 15, Anderson et al. discloses a method and system for processing the signing of a blockchain transaction, the system comprising:
a) a digital storage medium configured to store a portion of an access-key for signing, in particular blockchain, transactions (see paragraph [0078] the removable storage); and
b) a signature terminal comprising an input means configured to connect the digital storage medium and receive an input representative for the remaining not-stored part of the access-key to complete the signature to confirm the transaction (see paragraphs [0076]-[0079] the signing machine),
wherein a transaction to be signed on a blockchain is signed by a signing module based on a combination of the stored part of the access key on the digital storage medium and the input by the input means of the signature terminal, wherein the storage medium, the signature terminal and/or the input means are offline (see paragraphs [0076]-[0079] where the removable storage media are sequentially connected to the signing machine and shards of the key are decrypted based on an input and combined to confirm the transaction by signing the transaction and see paragraph [0074] as an example showing the offline nature of the devices).
As per claim 3, Anderson et al. discloses said input means selected from the group consisting of: A physical keypad, a virtual keyboard displayed on a touchscreen interface, a voice recognition module, a biometric scanner; an RFID or NFC reader, a smart card reader, a secure point-to-point connection module, a rotary dial, or a light pen (see paragraph [0082]).
As per claim 4, Anderson et al. discloses each tag further capable of receiving and executing kill codes, wherein a kill code according to the present invention may either be sent by the signing module or the signature terminal, wherein preferably the storage device itself has a protection circuit or software solution implemented that recognized attacks for unallowed access to the stored access-keys (see paragraph [0085] where the tamper detection portion that is capable of receiving and executing kill codes).
As per claim 5, Anderson et al. discloses the biometric scanner is selected from the group consisting of: a fingerprint scanner, an iris scanner, a facial recognition scanner, wherein the non-stored part of the access key is calculated based on this information by the signature terminal (see paragraphs [0069] and [0076]-[0079]).
As per claim 7, Anderson et al. discloses the access key is stored by a user partly with the help of input means on the storage medium or a new access key is generated by the system and partly displayed to the user and partly stored on the storage medium, wherein in particular the access-key is mapped to another logic of figures, symbols or word, preferably converted into figures according to the decimal system (see paragraphs [0058]-[0061] and [0076]-[0079]).
As per claim 8, Anderson et al. discloses the access key is a seed phrase or master seed phrase, which is in particular encrypted via SHA-256 or another cryptographic algorithm (see paragraphs [0060]-[0061] and [0074]-[0075]).
As per claims 11 and 12, Anderson et al. discloses for processing a transaction, the signing module is connected to the internet or in active connection with a computer network running a blockchain while the user may be offline, wherein the signing module is offline and only connects to the internet or to a computer network running a blockchain at a later point in time (see paragraph [0074]).
As per claim 14, Anderson et al. discloses the transactions processed are payment transactions, internal transactions, accounting transactions, identity verification processes or transactions related with the same (see paragraphs [0063]-[0064]).
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 (i.e., changing from AIA to pre-AIA ) 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 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. as applied to claims 1 and 3 above, in view of Devallonne (WO 2024154060).
As per claims 2 and 6, Anderson et al. discloses various interfaces for connecting devices and receiving input, but fails to explicitly disclose the digital storage medium is provided in form of or in combination with a RFID-Tag, NFC-Tag or UHF-Tag, each tag capable of storing a portion of said access key and transmitting said portion to a tag-reader, wherein said tags include passive, semi-passive, and semi-active tags and the secure point-to-point connection module is configured to receive PIN codes via a connection selected from the group consisting of Bluetooth or infrared.
However, Devallonne teaches a blockchain system with key shares that includes a digital storage medium is provided in form of or in combination with a RFID-Tag, NFC-Tag or UHF-Tag, each tag capable of storing a portion of said access key and transmitting said portion to a tag-reader, wherein said tags include passive, semi-passive, and semi-active tags and the secure point-to-point connection module is configured to receive PIN codes via a connection selected from the group consisting of Bluetooth or infrared (see paragraphs [0007]-[0009]).
At a time before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include the specific connections of Devallonne in the Anderson et al. system.
Motivation, as recognized by one of ordinary skill in the art, to do so would have been to make the system easier to use by not requiring physical connections.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. as applied to claim 1 above, in view of Guo et al. (US 11775377).
As per claims 9 and 10, Anderson et al. the use of blockchain networks which use multiple nodes and consensus determinations, but fails to disclose a multiple a signing modules in connection with one or more signature terminals each forming a network, wherein within the network the status of each module and terminal, in particular hardware and/or software, is synchronized with the further modules and terminals, wherein within the network, a consensus algorithm is established to decide if a devices is working correct, improbably or malicious.
However, Guo et al. teaches a blockchain system with multiple modules in connection with one or more terminals each forming a network, wherein within the network the status of each module and terminal, in particular hardware and/or software, is synchronized with the further modules and terminals, wherein within the network, a consensus algorithm is established to decide if a devices is working correct, improbably or malicious (see column 28 lines 41 through column 29 line 8).
At a time before the effective filing date of the invention, it would have been obvious to use the teachings of Guo et al. on the multiple modules and terminals of the Anderson et al. system.
Motivation, as recognized by one of ordinary skill in the art, to do so would have been to ensure the trustworthiness of the network.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. as applied to claim 12 above, further in view of Novotny et al. (US 20220188295).
As per claim 13, Anderson et al. teaches various different blockchain implementations (e.g. BitCoin and Ethereum) that use different proofs of work or state and further discloses the use of temporal delegations (see paragraphs [0076]-[0079] where blockchain operations are delegated to the custody platform), but fails to explicitly disclose the blockchain, whose transaction is to be signed, allow vertical or horizontal scaling.
However, Novotny et al. teaches a blockchain that allows vertical or horizontal scaling (see paragraphs [0057]-[0062]).
At a time before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include the scaling of Novotny et al. in the Anderson et al. system.
Motivation, as recognized by one of ordinary skill in the art, to do so would have been to allow for flexible use of resources.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed towards signing blockchain transactions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J PYZOCHA whose telephone number is (571)272-3875. The examiner can normally be reached Monday-Thursday 7:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hadi Armouche can be reached at (571) 270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Pyzocha/ Primary Examiner, Art Unit 2409
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