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 .
Acknowledgements
This is a first office action on the merits in response to the application filed November 22, 2024.
Claims 1-20 are pending in the application.
Claims 2-4, 9, 10, 12-14, and 19 are withdrawn from consideration.
Claims 1, 5-8, 11, 15-18, and 20 are examined below.
Based on a comparison of the PGPub US 2025/0086619 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Election/Restrictions
This application contains claims directed to the following patentably distinct species: the species of Fig. 2, the species of Fig. 3, and the species of Fig. 4. The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species (the method of message verification). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1, 11, and 20 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the due to their recognized divergent subject matter; and
(c) the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
In a voicemail from FADI ISTELINIDES (REG NO 80,840) on February 2, 2026 a provisional election was made without traverse to prosecute the invention of Fig. 3, claims 1, 5-8, 11, 15-18, and 20. Affirmation of this election must be made by applicant in replying to this office action. Claims 2-4, 9, 10, 12-14, and 19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
This application is a continuation of a divisional application. See MPEP § 201.06 (divisional) and MPEP § 201.07 (continuation). In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application(s) need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application(s) is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 5-8, 11, 15-18, and 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1, 5-8, 11, 15-18, and 20, the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites receiving a signed message, verifying the signed message, and approving a payment, which constitutes a certain method of organizing human activity (specifically, a commercial or legal interaction) or mental process. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (public key infrastructure) or amount to extra-solution activity. Because the abstract idea is not integrated into a practical application, claim 1 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 1 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
Independent claims 11 and 20 contain limitations similar to claim 1 and are therefore rejected using the same rationale.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 7, 8, 17, and 18), add additional elements that simply further link to a particular technological environment (claims 6 and 16), and/or amount to additional extrasolution activity (claims 5 and 15). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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 1, 5-8, 11, 15-18, and 20 are 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, applicant’s recitation “determining … whether a digital signature and a detached content of the digitally signed cross-border message is verified recursively” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear what makes this verification recursive. Based on the description of the verification process at [0065], it does not appear that there is any recursion required. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “verified recursively” to be “verified.”
Further regarding claim 1, the recitation “determining … whether a digital signature and a hash of the digitally signed cross-border message is verified recursively” would have been unclear to a person having ordinary skill at the time of the invention. The same analysis applied to the recitation in the immediately preceding paragraph applies, mutatis mutandis, to this recitation.
Claims 11 and 20 contain language similar to the recitation in claim 1 discussed in the two immediately preceding paragraphs, and claims 11 and 20 are rejected for reasons similar to those discussed above.
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 statute.
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.
The following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 5, 6, 11, 15, 16, and 20, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Chawla (US 2014/0052617 A1) in view of Kim (KR 20140008027 A).
Chawla discloses as follows:
Claim
Limitation
Chawla
1,11,20
receiving, by a beneficiary computing system from an intermediate computing system, a digitally signed cross-border message
Digitally Signed Request 254 in Fig. 2B and associated text
1,11,20
wherein the digitally signed cross-border message is signed using at least one of a signedData cryptographic message syntax, detached signedData cryptographic message syntax, or signcryptedData cryptographic message syntax
"the digital signature may be a detached signature" [0117]
1,11,20
verifying at least one of the digitally signed cross-border message or the intermediate computing system comprising determining, by the beneficiary computing system, at least one of
Validate the Signature ... 255 in Fig. 2B and associated text
1,11,20
whether a digital signature and a hash of the digitally signed cross-border message is verified recursively
1,11,20
whether a digital signature and a detached content of the digitally signed cross-border message is verified recursively
1,11,20
or whether unsigncryption and path validation of the intermediate computing system is successful
1,11,20
approving by the beneficiary computing system a cross-border payment based at least in part on verifying the at least one of the digitally signed cross-border message or the intermediate computing system
Process Payment Transaction 255 in Fig. 2B and associated text
5,15
retrieving, by the beneficiary computing system, the detached content based at least in part on a method for transmitting the detached content
It is inherent that something is retrieved based on the method by which it was transmitted.
Chawla fails to explicitly disclose but Kim teaches:
Claim
Limitation
Kim
1,11,20
retrieving, by the beneficiary computing system, a public key of the intermediate computing system or an originating computing system
"the payment request receiver 182 may receive the merchant key assigned to the merchant while receiving the hash value"
6,16
generating, by the beneficiary computing system, a hash of the detached content; and comparing, by the beneficiary computing system, the generated hash with a hash in the digitally signed cross-border message
"When the payment request information and the hash value are received, the payment request authenticator 186 confirms the payment authentication token corresponding to the payment request information, and then transmits the payment authentication token to the hash algorithm synchronized with the hash algorithm applied to the payment interface Algorithm to generate a hash verification value and compare the received hash value with the hash verification value to authenticate the legitimacy of the payment request information"
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Chawla to include the public key retrieval and hash comparison of Kim in order to achieve the predictable result of increased security of the transaction.
Claims 7, 8, 17, and 18, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Chawla in view of examiner’s official notice.
Regarding claims 7 and 17, Chawla / Kim discloses as discussed above, but Chawla / Kim fails to explicitly disclose wherein in response to determining that the generated hash is different from the hash in the digitally signed cross-border message, failing to verify the digitally signed cross-border message and disapproving the cross-border payment.
However, the examiner takes official notice that it is old and well known in the art to fail to verify a transaction in response to a hash mismatch because doing otherwise would defeat the purpose of making the comparison in the first place.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Chawla / Kim to include the failing to verify in response to hash mismatch of examiner’s official notice because all the claimed elements/steps were known in the prior art and one skilled in the art could have combined the elements/steps as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results, such as increased security, to one of ordinary skill in the art at the time of the invention.
Regarding claims 8 and 18, Chawla / Kim discloses as discussed above, but Chawla / Kim fails to explicitly disclose wherein in response to determining that the generated hash is different from the hash in the digitally signed cross-border message, verifying, by the beneficiary computing system, another digitally signed cross-border message sent by the originating computing system to the intermediate computing system.
However, the examiner takes official notice that it is old and well known in the art to repeat a verification attempt in order to create a more resilient system.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Chawla / Kim to include the repeat verification attempt of examiner’s official notice because all the claimed elements/steps were known in the prior art and one skilled in the art could have combined the elements/steps as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results, such as a more robust and resilient system, to one of ordinary skill in the art at the time of the invention.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bonsignore (WO 2014166519 A1) discloses a qualified electronic signature (QES) system, including payment requests and detached signatures. "Advantageously, the QES system makes use (in the majority of the described embodiments) of a QES in detached form, which is not included in the same message with the plain text information and therefore neither the corresponding plain text information nor the sensitive data can be extracted by a hacker.".
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
Prosecution Insights