DETAILED ACTION
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 .
Response to Amendment
The amendment filed on June 11, 2026 has been entered. Applicant has amended claims 1-2, 6-8 and 11-13. Claims 14-20 were previously withdrawn from consideration. Claims 1-20 are now pending. Claims 1-13 have been examined and currently stand rejected.
Claim Objections
Regarding claims 1-2, 5, 11 and 13: The term “the token register” lack of antecedent basis.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Govindarajan et al. (US 2019/0095907 A1) “Govindarajan” in view of Springer et al, (US 2013/0226791 A1) “Springer”.
Regarding claim 1: Govindarajan disclose A secure transaction unit (i.e., transaction device) for use in an electronic token transaction system, the secure transaction unit comprising:
a secure element arranged within the secure transaction unit and comprising a processor, (i.e., central processing unit (CPU), a data memory (i.e., memory) configured to store at least one token received from another secure element, and a token-transaction communication interface; and (See at least Govindarajan, Abs.; [0021]; [0023] secure element subsystem)
a special secure element distinct from the secure element and arranged within the secure transaction unit, (See at least Govindarajan, Abs.; [0021]; [0045]; a secure ledger; store that signed offline transaction in respective payer and payee secure ledgers that are include in the secure element subsystems.)
wherein the processor of the secure element is configured to receive, via the token transaction communication interface, the at least one token from the other secure element in an offline token transaction between the secure element and the other secure element; andGovindarajan, [0021]; [0031] The payer transaction device may then use a local, peer-to-peer wireless connection to share that signed offline transaction with the payee transaction device, and each of the payer transaction device and payee transaction device may store that signed offline transaction in respective payer and payee secure ledgers that are include in the secure element subsystems on the payer transaction device and payee transaction device; a secure digital token as part of the offline transaction with the payee transaction device.)
wherein the processor of the special secure element is:
configured to directly or indirectly receive history data, related to the at least one token received by the secure element from the other secure element, to temporarily store the history data in the secure storage unit (See at least Govindarajan, [0021]; each of the payer transaction device and payee transaction device may store that signed offline transaction in respective payer and payee secure ledgers that are include in the secure element subsystems on the payer transaction device and payee transaction device. any device that receives the signed offline transaction may subsequently share it in the same manner in order to distribute the signed offline transaction. When a subsequent connection to the Internet becomes available to any device that has received the signed offline transaction, the digital token may then be synchronized with at least one ledger tracking system by, for example, broadcasting the signed offline transaction over the connection to the Internet to at least one ledger tracking system.)
Govindarajan does not explicitly disclose a separate a secure element computing unit comprising a special secure element computing unit that receives token data, stores and to provide the temporarily stored history data directly to the token register without the secure element, to register the at least one received token.
Springer, on the other hand teaches a separate a secure element computing unit comprising a special secure element computing unit the special secure element comprising a processor, a secure storage unit, and a communication interface; that receives token data, stores and to provide the temporarily stored history data directly to the token register without the secure element, to register the at least one received token. (See at least Springer, [0030-0036]; [0178]; [0209]; The contactless device 120 also comprises a secure element 126, Returning to FIG. 5, in block 525, the smart card transmits the entire saved transaction history from its memory 113 to the contactless device 120; the contactless device 120 stores the smart card 110 identification information and transaction history (including the newly-added record) until network 140 access is available. The remote system 160 performs an analysis and synchronization of the smart card 110 transaction history received from the contactless device 120. In an exemplary embodiment, the remote system 160 performs the analysis when the transaction history is transmitted.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Govindrajan and include Springer’s teachings in order to reduce interruption and improving transaction processing efficiency.
Regarding claim 2: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the processor of the secure element is configured to perform a further offline transaction and, in parallel, the processor of the special secure element is configured to provide the temporarily stored history data directly to the token register to register the at least one toke0n received by the secure element from the other secure elementSpringer [0107]; the contactless device 120 transmits the smart card 110 transaction history to
the remote system 160. In an exemplary embodiment, the deposit transaction occurs when the contactless device 120 has network 140 access, allowing for simultaneous transmission of the smart card 110 transaction history to the remote system 160. In an alternative embodiment, the smart card 110 transaction history is stored on the contactless device 120 and transmitted to the remote system 160 at a later time after the completion of the deposit of funds via a wireless or wired network connection 140.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Govindrajan and include Springer’s teachings in order to reduce interruption and improving transaction processing efficiency.
Regarding claim 3: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the received history data comprises two or more token history entries. (See at least Govindarajan, [0031]; [0033] Referring now to FIGS. 2 and 3, embodiments of methods 200 and 300 for providing secure offline transactions are illustrated. Specifically, the method 200 describes the participation in secure offline transactions by a payee, while the method 300 describes the participation in secure offline transactions by a payer.
Regarding claim 6: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the data memory of the secure element is configured to store the at least one received token separately from the history data stored in the secure storage unit of the special secure element.(See at least Govindarajan, [0023] devices discussed below. For example, the secure element subsystem 104 may be provided by tamper-resistant hardware included in the transaction device 100 that is configured to securely host application and securely store data, Abs In response, the wallet application creates a digital token that allocates the transaction amount from the payer account balance to the payee identifier, and records the digital token in a payer secure ledger in the secure ledger database, which reduces the available payer account balance by the transaction amount.)
Regarding claim 7: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 6. The combination further disclose, wherein the at least one received token is modified by the processor of the secure element. (See at least Govindarajan, [0051] the payer
transaction device 504 writes a digital token to the ledger database 108 on its secure element subsystem 104.)
Regarding claim 8: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 7. The combination further disclose wherein the secure element comprises a data memory configured for storing the at least one received token. (See at least Govindarajan, [0023] devices discussed below. For example, the secure element subsystem 104 may be provided by tamper-resistant hardware included in the transaction device 100 that is configured to securely host application and securely store data, Abs In response, the wallet application creates a digital token that allocates the transaction amount from the payer account balance to the payee identifier, and records the digital token in a payer secure ledger in the secure ledger database, which reduces the available payer account balance by the transaction amount.)
Regarding claim 9: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the secure transaction unit is a merchant terminal. (See at least Govindarajan, [0069] The payee device 704 may be maintained, for
example, by a conventional or on-line merchant, conventional or digital goods seller, individual seller, and/or application developer offering various products and/or services in exchange for payment to be received conventionally or over the network 712.)
Regarding claim 10: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the processor of the secure element computing unit is further configured to provide a token transaction request to the other secure element. (See at least Govindarajan, Fig. 3; payer transaction device creates payment token and writes payment token to ledger database on secure transaction element.
Regarding claim 11: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination further disclose wherein the processor of the secure element computing unit is further configured for: receive the history data from the other secure element; (see at least Govindarajan, fig. 2 provide the history data to the special secure element, and/or providing a registration request to the special secure element for providing the history data to the token register. payee transaction device writes invoice entry to ledger database on secure element.)
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Govindarajan and Springer as applied to claim 3 above, and further in view of Whitham, (WO 2023/063987 A1).
Regarding claim 4: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 3. The combination do not explicitly disclose, however Whitham teaches wherein, each of the two or more token history entries refers to an unregistered token of the offline token transaction of the secure element, of a previous transaction of the other secure element, or of a previous transaction of a further other secure element. (See at least Whitham, [00101] the smart contract data may include indications of the previous complex digital token values before the transfer and the current digital token values after the transfer.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination and include Whitham teachings in order to improve traceability and validation of offline transactions.
Regarding claim 5: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 3. The combination do not explicitly disclose, however Whitham teaches wherein at least one first token history entry of the two or more token history entries allows the token register to register a previous token and thereafter a second token history entry of the two or more token history entries allows the token register to register the received token. (See at least Whitham, [0094]; [00101] In these implementations, the complex token system 100 may use an unspent transaction output (UTXO) model to aggregate the amount of unspent outputs at a user's address to determine the complex digital token value at the user's address (e.g., 8 + 5i).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination and include Whitham teachings in order to improve traceability and validation of offline transactions.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Govindarajan and Springer as applied to claim 1 and 11 above, and further in view of Albert et al (US 2024/0275599 A1).
Regarding claim 12: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 11. The combination do not explicitly disclose; however, Albert teaches wherein the processor of the special secure element is further configured to receive the registration request from the secure transaction unit or the s the processor of the secure element. (See at least Albert, [0012] receiving, in a token reference register of the transaction system, a sequence of registration requests.)
It would have been obvious to one of ordinary still in the art to include in the system of the above combination the ability to receive registration requests and response as taught by Albert since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 13: The combination of Govindarajan and Springer disclose the secure transaction unit according to claim 1. The combination do not explicitly disclose; however, Albert teaches wherein the processor of the secure element is further configured to receive a registration response from the token register. (See at least Albert, [0035] In a preferred embodiment, the method comprises the further steps of generating, from the verification unit of the token reference register, a registration response, the registration response indicating a result of the verification step, and sending the registration response to a subscriber unit or registration request unit of the transaction system sending the registration request from the sequence f registration requests, preferably the subscriber unit having the token of the at least one token reference of the sequence of registration requests.)
It would have been obvious to one of ordinary still in the art to include in the system of the above combination the ability to receive registration requests and response as taught by Albert since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Response to Arguments
Claim Interpretation and 35 U.S.C. 112(a) and 112(b) rejections:
Applicant has corrected the previous identified issues. Accordingly, the 112(f) claim interpretation and their respective35 U.S.C. 112(a) and 112(b) rejections are withdrawn.
Rejection of claims 1-13 under 35 U.S.C. 101
Applicant’s arguments with respect to the 101 rejection have been considered and were found to be persuasive. Amendment pp. 13-16. Examiner contends that the claims still could be considered to be reciting one or more abstract ideas (e.g., receive data between the component and providing and storing the data), however, the additional elements recited in amended claim 1 integrate any alleged abstract idea into a practical application. In view of the current claim amendments, the 35 U.S.C. 101 rejection is withdrawn.
Rejection of claims 1-3 and 6-13 under 35 U.S.C. 103
Applicant asserts that Govindarajan does not disclose a secure transaction unit having both a secure element and a distinct local special secure element arranged within the same transaction unit. Examiner respectfully disagrees. See Govindarajan, Fig. 1A. a secure transaction unit (i.e., transaction device) having both a secure element and a distinct local special secure element (i.e., secure element subsystem and ledger database) arranged within the same transaction unit. However, the functionality that the token handling occurs in the secure element and history-data storage and direct registration communication are offloaded to a distinct special secure element was rejected using a combination of references. See Springer [0030-0036]; [0178]; [0209])
Applicant asserts that Govindarajan also does not disclose providing temporarily stored history data directly from a special secure element to a token register without the secure element. (Remarks, p. 17). This argument have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. (See at least Springer, [0030-0036]; [0178]; [0209]; The contactless device 120 also comprises a secure element 126, Returning to FIG. 5, in block 525, the smart card transmits the entire saved transaction history from its memory 113 to the contactless device 120; the contactless device 120 stores the smart card 110 identification information and transaction history (including the newly-added record) until network 140 access is available. The remote system 160 performs an analysis and synchronization of the smart card 110 transaction history received from the contactless device 120. In an exemplary embodiment, the remote system 160 performs the analysis when the transaction history is transmitted.)
Applicant asserts that Albert does not teach or suggest a secure transaction unit containing a secure element and a distinct local special secure element, where the special secure element temporarily stores history data and provides the history data directly to the token register without the secure element. Remarks, p. 18. This argument have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Huxham (US20140214687A1): A cryptographic expansion device that can be attached to a communication component of a communication device to enable the communication device to perform cryptographic operations on communications sent to and from the communication device is described. When used with a communication device, the cryptographic expansion device enables the communication device to send and received end-to-end secure encrypted communications. The cryptographic expansion device can be used with a communication device without requiring any changes to the internal software or hardware of the communication device and without requiring any modification to the communication protocols of the communication device. In some embodiments, the end-to-end secure communications enabled by the cryptographic expansion device can be utilized by a user of the communication device to perform financial and/or banking transactions. Abs.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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