DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 12/31/2024.
Claims 1-20 are pending.
Claims 1-20 have been examined.
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 .
Priority
The limitations of independent claims 1 and 11 do not have the priority benefit of 62/016,556 06/24/2014. The Disclosure (¶ 50, 51) states “The issuer node 105A may generate the new currency in a variety of ways, including but not limited to sending a new amount of currency to itself as part of a payment transaction and advertising the payment transaction throughout the cryptocurrency payment network145…In some embodiments, this "generation" step -- including sending a new amount of currency from the issuer node 105A back to the issuer node 105A -- may not be required, and instead, the issuer node 105A may proceed to the next step of sending some or all of the new amount of currency to a distributor node 120A.” The disclosure does not give priority to the current limitations that recite claim 1, “receiving, by an authentication module of the server computer, a request message from a financial institution server computer to generate a digital currency, the request message including an amount of the digital currency, the request message encrypted using a first key of a key pair associated with the financial institution server computer” and claim 13, “receiving, by a server computer, a request message from a financial institution server computer to generate a digital currency, the request message encrypted using a first key of a key pair associated with the financial institution server computer”. No such request is made. The limitations do not have priority benefit to the date 06/24/2014.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,687,924 (“Patent Document”) and U.S. Patent No. 11,055,707. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the Patent Document recites all the limitations of claim 1 of the instant application; however, claim 1 of the Patent Document differs since it further recites additional claim limitations.
Instant Application
Patent Document
A computer-implemented method comprising:
receiving, by a server computer, a request message from a financial institution server computer to generate a digital currency, the request message encrypted using a first key of a key pair associated with the financial institution server computer;
A method comprising:
receiving, by an authentication module of a server computer, a request message from a financial institution server computer to generate a digital currency, the request message including an amount of the digital currency, the request message encrypted using a first key of a key pair associated with the financial institution server computer;
determining, by the server computer, that the financial institution server computer is an issuer node authorized to generate the digital currency using a second key of the key pair associated with the financial institution server computer; and
determining, by the authentication module of the server computer, that the financial institution server computer is an issuer node authorized to generate the digital currency using a second key of the key pair associated with the financial institution server computer;
outputting, by the authentication module to a data output module of the server computer, an indication that the financial institution server computer is an issuer node authorized to generate the digital currency;
receiving, by the data output module of the server computer from the authentication module, the indication that the financial institution server computer is an issuer node authorized to generate the digital currency; and
authorizing, by the server computer, the financial institution server computer to generate the digital currency by sending a response message to the financial institution server computer, thereby
authorizing, by the data output module of the server computer, the financial institution server computer to generate the digital currency by sending a response message to the financial institution server computer.
Claim 1 of the patent document contains the additional elements of “outputting, by the authentication module to a data output module of the server computer, an indication that the financial institution server computer is an issuer node authorized to generate the digital currency; receiving, by the data output module of the server computer from the authentication module, the indication that the financial institution server computer is an issuer node authorized to generate the digital currency.”
The claims in the instant application are anticipated by the Patent Document. The claims are directed to the same subject matter, perform the same method steps and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other inventions. The instant application claims are generic to the limitations in the Patent Document. Each limitation in the instant application is fully encompassed in the Patent Document claims.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to an article of manufacture and, claim 11 is directed to a method.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving, … a request … determining, … authorized … and authorizing, … the financial institution ….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, authorizing a bank to perform a transaction. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application. The use of a distributed ledger or blockchain does not preclude the claim from reciting an abstract idea as the blockchain recites functions of a generic computer component, such as storing records.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving, … a request … determining, … authorized … and authorizing, … the financial institution ….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2, 3, 6, 7, 10, 12, 13, 16, 17 and 19 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 4, 8, 9, 14, 18, 20 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 5, 15 recite insignificant extra solution activity such as receiving and storing information. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-9 and 12-20 are also rejected.
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.
Claim 9 is 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 pre-AIA the applicant regards as the invention.
Claim 9 recites the limitation "the nodes". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Al-herz et al (US 20090048979) (“Al-herz”), and further in view of Rooyen et al. (US 20150324764) (“Rooyen”).
Regarding claims 1 and 11, Al-herz discloses receiving, by a server computer, a request message from a financial institution server computer to generate a digital currency, the request message encrypted using a first key of a key pair associated with the financial institution server computer (Abstract; ¶ 22, 107, 111, 118-122, 133-136, 143, 146, 169, 170; claim 1);
Al-Herz- a bank to receive a request for an amount of digital cash from the user and generate a request for a digital cash token corresponding to the requested amount; and an issuer of digital cash to issue the digital cash token in response to the request from the bank, … The encryption program encrypts the information using the public key of the bank PKB and sends PKB([PKI([pPKU,x]pSKU),UID,x]mSKU) to the user's bank via a communications path…Referring to FIG. 7, the digital cash issuer receives the information PKI([PKI([pPKU,x]pSKU),x]SKB), and the decryption program decrypts the information using the digital cash issuer's secret key SKI. The signature verifying program verifies the signature of the bank using the public key of the user's bank PKB… (¶ 22, 118, 120; claim 1);
determining, by the server computer, that the financial institution server computer is an issuer node authorized associated with the financial institution server computer; and (Abstract; ¶ 111, 118-122, 133-136, 236-238);
Al-Herz- Digital signatures with master keys are used for authentication with the certificate authority and the bank, wherein digital signatures with pseudonym keys are used for authentication with the issuer of digital cash virtual accounts and the shop… The use of the two pair of keys allows the users to use one pair of keys for authenticating the user with an entity that holds information that is linked to the user's real identity, and for encrypting information sent to the user by such entities. At the same time, the user can use another pair of keys to authenticate the user with an entity that holds information that is linked to the user's pseudonym identity such as an issuer of digital cash tokens, and for encrypting information sent to the user by such entities… (¶ 236, 238);
Al-herz does not disclose to generate the digital currency using a second key of the key pair , authorizing, by the server computer, the financial institution server computer to generate the digital currency by sending a response message to the financial institution server computer, thereby causing the financial institution server computer to generate the digital currency.
Rooyen teaches to generate the digital currency using a second key of the key pair , authorizing, by the server computer, the financial institution server computer to generate the digital currency by sending a response message to the financial institution server computer, thereby causing the financial institution server computer to generate the digital currency (Abstract; ¶ 17, 21-23, 49-52, 75-80, 87-91; claim 14, 18);
Rooyen - a voucher generating component for generating a voucher having key data embedded therein, the key data being associated with a voucher cryptocurrency address holding a token amount of cryptocurrency, the token amount being less than a cryptocurrency equivalent of the face value at the time the voucher is generated, wherein the key data is usable to conduct a transaction against the voucher cryptocurrency address, and wherein a record of the transaction becomes visible in a transaction ledger … (claim 18);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Al-herz and Rooyen in order to enable a user to transact using cryptocurrency (Rooyen; ¶ 2-4).
Regarding claims 2 and 12, Al-herz teaches wherein determining that the financial institution server computer is an issuer node authorized to generate the digital currency further comprises: retrieving, by the server computer, a profile associated with the financial institution server computer stored in a database; retrieving, by the server computer, a second key of the key pair associated with the financial institution server computer stored with the retrieved profile; and determining, by the server computer, that the retrieved second key of the key pair is associated the first key of the key pair received in the request message (Abstract; ¶ 111, 118-122, 133-136, 143, 146, 169, 170; claim 1).
Regarding claims 3 and 13, Al-herz teaches wherein determining that the retrieved second key of the key pair matches the first key of the key pair received in the request message further comprises: applying, by the server computer, a decryption algorithm to the encrypted request message using the second key to decrypt the request message (Abstract; ¶ 111, 118-122, 133-136, 143, 146, 169, 170, 185-188).
Regarding claims 4 and 14, Al-herz teaches wherein the key pair is unique to the financial institution server computer (¶ 111).
Regarding claims 5 and 15, Rooyen teaches wherein a value of each unit of the digital currency is set to be equal to an amount of a fiat currency, and wherein the method further comprises: storing, by the server computer, a conversion rate between the digital currency and the fiat currency (¶ 43-50, 56, 67-70).
Regarding claims 6 and 16, Al-herz teaches wherein the request message is a first request message, wherein the financial institution server computer is a first financial institution server computer, wherein the request includes a first amount, wherein the key pair is a first key pair, wherein the response message is a first response message, and wherein the method further comprises: receiving, by the server computer, a second request message from a second financial institution server computer to distribute a second amount of the digital currency, the second request message including the second amount of the digital currency, the second request message encrypted using a third key of a second key pair associated with the second financial institution server computer; determining, by the server computer, that the second financial institution server computer is a distributor node authorized to distribute the digital currency using a fourth key of the second key pair associated with the second financial institution server computer; and authorizing, by the server computer, the second financial institution server computer to distribute the second amount of the digital currency by sending a second response message to the second financial institution server computer (¶ 97, 123-130, 153-159, 199-203).
Regarding claims 7 and 17, Rooyen teaches generating, by the server computer, a first digital certificate for the first financial institution server computer, the first digital certificate including the first key indicating that the first financial institution server computer is authorized to generate the digital currency; generating, by the server computer, a second digital certificate for the second financial institution server computer, the second digital certificate including the second key indicating that the second financial institution server computer is authorized to distribute the digital currency to a user computing device; and sending, by the server computer, the first digital certificate to the first financial institution server computer and the second digital certificate to the second financial institution server computer (Abstract; ¶ 16-18, 97, 108-117).
Regarding claims 8 and 18, Rooyen teaches wherein the first financial institution server computer and the second financial institution server computer act as nodes in a cryptocurrency payment network, wherein the first financial institution server computer acts as an issuer node, and wherein the second financial institution server computer acts as a distributor node and is not allowed to generate the digital currency (¶ 13, 70-77, 99).
Regarding claim 9, Rooyen teaches wherein each of the nodes maintains a ledger of transactions conducted in a cryptocurrency payment network using the digital currency (¶ 43-50, 56, 67-70).
Regarding claim 10, Rooyen teaches determining that the financial institution server computer is authorized to generate the digital currency, comprising: determining a first identifier associated with a first financial institution associated with the first financial institution server computer; and determining that the first financial institution is authorized to generate the digital currency using the first identifier (¶ 51, 56, 81, 108-110).
Regarding claim 19, Rooyen teaches generating, by the server computer, a first profile for the first financial institution server computer in a database, wherein the first profile identifies the first financial institution server computer using a first identifier; and storing, by the server computer, a first stored key associated with the first key sent to the first financial institution server computer in the first profile (¶ 80-87, 104-107).
Regarding claim 20, Rooyen teaches wherein the second financial institution server computer is associated with a payment processing server computer (¶ 48, 128).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kurani(US 11037110) teaches cryptocurrency, exchange for fiat rates and generating tokens
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