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 .
DETAILED ACTION
This Office Action is in response to Applicant’s communication filed on December 20, 2024 for the patent application 18/989,729. Claims 1 – 20 are pending in the application.
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.
Claim(s) 1 – 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 - 20 are either directed to a method or system or computer readable medium, which are statutory categories of invention. (Step 1: YES).
The Examiner has identified method claim 1 as the claim that represents the claimed invention for analysis and is similar to apparatus claim 9 and computer readable medium claim 17.
Claim 1 recites the limitations of:
( A ) reserving, by the third-party payment platform, an amount of volatile currency controlled by the consumer;
( B ) computing, by the third-party payment platform using a risk management algorithm, a risk-worthy amount of reliable currency representing an amount of reliable currency that reflects an acceptable amount of risk to the third-party payment platform, wherein the amount of reliable currency is backed by the reserved amount of consumer volatile currency, and wherein the entire amount of risk-worthy reliable currency is less than an equivalent amount of reliable currency converted from the reserved consumer volatile currency based on current exchange rates;
( C ) generating and issuing to the consumer, by the third-party payment platform, a reliable token representing the risk-worthy amount of reliable currency;
( D ) receiving, by the third-party payment platform and from a merchant device, a request to authenticate the issued reliable token and verify an amount of the reliable token in relation to a purchase initiated by the consumer;
( E ) validating, by the third-party payment platform, the authentication and amount verification request;
( F ) performing, by the third-party payment platform, a merchant settlement process of the purchase by issuing a purchase amount to the merchant in the reliable currency; and
( G ) performing, by the third-party payment platform, a consumer settlement process at a later time post-purchase by depositing an amount of volatile currency equivalent to the purchase amount in reliable currency from the consumer.
These limitations without the bolded limitations above, cover performance of the limitations as certain methods of organizing human activity under their broadest reasonable interpretation.
More specifically, these limitations cover performance of the limitations as a fundamental economic practice.
In summary, if claim 1 limitations, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claims 9 and 17 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract).
The use of the third-party payment platform or any of the bolded limitations in claim 1 are just applying generic computer components to the recited abstract limitations. Similar arguments apply to claims 9 and 17.
Therefore, the above mentioned judicial exception is not integrated into a practical application by merely applying generic computer components (bolded elements).
Furthermore, the “receiving” and “performing” steps are recited at a high level of generality and amounts to mere data gathering, which is a form of extra-solution activity (See MPEP 2106.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
In addition, supported by specification, the computer hardware are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component., see MPEP 2106.05(f), where applying a computer or using a computer is not indicative of a practical application).
Claim 1, limitation ( A ) – ( G ) above in Applicant’s specification paras [0027] – “Referring to FIG. 1, illustration 100 provides a system diagram of an example network of a payment platform interacting with front end user devices that may be utilized by consumers and merchants, according to some embodiments. An internal system 105 of a third-party payment platform may be located remotely from the front end or portal devices 125 and 130 that may be interfaced by consumers and merchants. This remote system 105 of the third-party payment platform may be configured to facilitate a reliable handling of volatile currencies, such as cryptocurrencies, to be exchanged for tangible goods and services. The remote system 105 may include a reducing currency denomination (RCD) token platform 110 that is configured to generate secure tokens representing predefined amounts of a reliable currency, based on an underlying currency that is more volatile, such as a cryptocurrency. An example description of the RCD tokens and a platform configured to generate them may be found in application Ser. No. 11/851, 248, now U.S. Pat. No. 9,129,284, which is incorporated herein by reference. The tokens may be issued to consumers who participate in the third-party payment platform by placing in reserve an amount of their volatile currency. This may be stored in a digital wallet 115 under the control of the consumer but facilitated by the third-party payment plat-form. Practically speaking, the consumers may place in reserve any amount of multiple types of volatile assets, such as multiple types of cryptocurrency, such that the third-party platform may have access to hundreds of millions or billions of an equivalent amount of fiat (reliable) currency in total.“.
Also, claim 1, limitation ( B ) above in Applicant’s specification para [0047], which discloses “In some embodiments, the risk-management algorithm may take into account additional risk factors that may mitigate risk for the third-party payment system, allowing a consumer to receive a higher percentage of value in the secure token for a given amount of underlying volatile currency. These factors may include the consumer having a high credit score, knowledge about a good consumer record or experience from the consumer, a longer history of payment usage and performance by the consumer, and so on.“.
Also, claim 1, limitation ( D ) above in Applicant’s specification para [0066], which discloses “With this transaction taking place, at block 520, the third-party payment platform may receive from the merchant or merchant device a request for authentication and amount verification of the issued reliable token, in connection with the purchase initiated by the consumer. This authentication and amount verification request may be received at the RCD database of the third-party payment platform, initiated by the merchant point-of-sale device or related digital app.“. Similar arguments apply to claims 9 and 17.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Therefore, claims 1, 9 and 17 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application).
The claims 1, 9 and 17 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (bolded elements above) amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely "applying" the exception using generic computer components cannot provide an inventive concept.
Therefore, the claims 1, 9 and 17 are not patent eligible under 35 USC 101. (Step 2B: NO. The claims do not provide significantly more).
Dependent Claims
Dependent claims 2 – 8, 10 – 16 and 18 - 20 are also rejected under 35 U.S.C. 101.
Regarding claims 2, 10 and 18, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claims 2, 10 and 18 states that “the volatile currency comprises a cryptocurrency that requires a time-intensive blockchain verification process to authenticate that the consumer is in control of the volatile currency; and performing the consumer settlement process by the third-party payment platform comprises conducting the blockchain verification process in order to transfer the purchase amount of cryptocurrency from the consumer to the third-party payment platform.” . These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claims 10 and 18.
Regarding claims 3, 11 and 19, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claims 3, 11 and 19, states “wherein the merchant does not recognize the volatile currency controlled by the consumer as a valid form of payment for the consumer initiated purchase..”. This step amounts to no more than mere data gathering, which is a form of insignificant extra-solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of data gathering to be well- understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claims 11 and 19.
Regarding claims 4, 12 and 20, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claims 4, 12 and 20 states, "wherein the risk management algorithm includes the following factors when computing the risk-worthy amount of reliable currency: volatility of underlying currency value over set time based parameters; volatility of consumer-held currency relative to another currency or basket/set of currencies; a ratio of non-restricted balance to restricted balance; an amount of cumulative currency held by the third-party payment platform; and an amount of anticipated volatile currency in the third-party payment platform needed for settlement.". This step amounts to no more than mere data gathering, which is a form of insignificant extra-solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of data gathering to be well- understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claim 12 and 20.
Regarding claim 5, this claim merely add further description to the process of “wherein the reliable currency includes a fiat currency that is backed by the full faith of a stable government and wherein the merchant recognizes the reliable currency as a valid form of payment for the consumer initiated purchase.”. This limitation amount to no more than mere data gathering/outputting as described in reference to claim 1 (see analysis above). Merely describing the conditions under which the fiat currency is backed does not integrate the abstract idea into a practical application, or amount to significantly more than the judicial exception, because it does not impose any meaningful limitations on practicing the abstract idea.
Regarding claim 6, this claim merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 6 states that, "wherein the reliable token comprises a reducing currency denomination (RCD) token generated by an RCD database.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
Regarding claim 7, this claim merely add further description to the process of “receiving, by the third-party payment platform, a consumer initiated instruction to conduct the consumer settlement process prior to a deadline such that the volatile currency amount deducted from the consumer is less than an amount of volatile currency that would be deducted at the time of the purchase, due to currency fluctuations inherent in the volatile currency.”. This limitation amount to no more than mere data gathering/outputting as described in reference to claims 21 and 29 (see analysis above). Merely describing the conditions under which the score is generated does not integrate the abstract idea into a practical application, or amount to significantly more than the judicial exception, because it does not impose any meaningful limitations on practicing the abstract idea.
Regarding claim 8, this claim merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 8, states “comprising issuing the reliable token to represent a line of credit in reliable currency that is backed by the reserved amount of consumer volatile currency.”. This step amounts to no more than mere data gathering, which is a form of insignificant extra-solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of data gathering to be well- understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
As a result, such limitations do not overcome the requirements as described above. Therefore, claims 2 – 8, 10 – 16 and 18 - 20 are directed to an abstract idea. Thus, claims 1 – 20 are not patent eligible.
Nonstatutory Double Patenting Rejection
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable U.S. Patent No. 12,211,052 (Pat.’052) and 11,544,712 (Pat.’712). Although the claims over claims 1 - 20 of at issue are not identical, they are not patentably distinct from each other because Applicant used a slightly different terminology to claim the same or substantially the same invention. See In re Griswold, 150 USPQ 804 (CCPA 1966) and MPEP § 804.02. In fact, a comparison between claims 1 - 20 of this application and claims 21 - 40 of Pat.’052 and claims 1 - 20 of Pat.’712 shows that these claims claim common elements such as “reserving, by the third-party payment platform, an amount of volatile currency controlled by the consumer, wherein the volatile currency comprises a cryptocurrency that requires a blockchain verification process to authenticate that the consumer is in control of the volatile currency, and wherein the consumer is prevented from withdrawing any portion of the amount of volatile currency; computing, by the third-party payment platform using a risk management algorithm, a risk-worthy amount of reliable currency representing an amount of reliable currency that reflects an acceptable amount of risk to the third-party payment platform; generating and issuing to the consumer, by the third-party payment platform, a reliable token representing the risk-worthy amount of reliable currency; receiving, by the third-party payment platform and from a merchant device, a request to authenticate the issued reliable token and verify an amount of the reliable token in relation to a purchase initiated by the consumer; and performing, by the third-party payment platform, a consumer settlement process at a later time post-purchase by depositing an amount of volatile currency equivalent to the purchase amount in reliable currency from the consumer.”. See In AbbVie Inc. On the other hand, Applicant has not shown that the one or more processors; and a memory storing computer-executable instructions, are critical. See In re Aller. To select the non-transitory, computer-readable medium storing instructions claimed in claims 21 - 40 of Pat.’052 and claims 1 - 20 of Pat.’712 as claimed in claims 1 - 20 of this application would have been an obvious choice by performing routine experimentation. KSR and stare decisis above.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include one or more processors; and a memory storing computer-executable instructions, as claimed in this application as taught or suggested by claims 21 - 40 of Pat.’052 and claims 1 - 20 of Pat.’712 because application claims 1 - 20 would have been obvious over the reference claims 21 - 40 of Pat.’052 and claims 1 - 20 in Pat.’712.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN H. HOLLY whose telephone number is (571)270-3461. The examiner can normally be reached on MON. - FRI 10 AM - 8 PM.
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/John H. Holly/Primary Examiner, Art Unit 3696