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 communication is in response to the application filed on 17 January 2025. Claims 1-6 are currently pending. The rejections are as stated below.
Double Patenting
The non-statutory 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 non-statutory obviousness-type 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); and In re Thorington, 418 F.2d 528, 163USPQ 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-6 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-19 of Patent No. US 12223020 B1 and claims 1-13 of Patent No. US 10162954 B1. The claims of the instant application and the patents mentioned above are drawn to methods and corresponding apparatuses for sensing biometric information using a sensor of a card to transfer currency between users. Although the conflicting claims are not identical, they are not patentably distinct from each other, because they recite means or steps that are substantially the same and would have been obvious to one of ordinary skill in the art.
Furthermore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-19 of Patent No. US 12223020 B1 and claims 1-13 of Patent No. US 10162954 B1, but they are not patently distinct.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 1 (exemplary) recites a series of steps for conducting a transaction by transferring an amount of currency between users.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent method claim 1, recites the limitations of sensing biometric information of an individual; authenticating the sensed biometric information by comparing the sensed biometric to stored biometric information; responsive to the authenticating, decrypting an encrypted version of a private key; generating a signed message using the private key, wherein the signed message provides for proof of possession of the private key and specifies an amount of cryptocurrency for a transaction to transfer ownership of the amount of currency to an address of a payee, and wherein the address of the payee is an encoding of a public key; and transmitting the signed message.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (transfer ownership of the amount of currency to an address of a payee). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of a sensor, memory, circuitry and an interface of the card to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0024 and 0034). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the server at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 5 and 6. Furthermore, dependent claims 2-4 do not add limitations that meaningfully limit the abstract idea.
Dependent claims 2-4, recites the additional limitations of receiving a confirmation for the transaction, wherein the confirmation corresponds to actions performed by a proof-of-work system in which blocks of transactions are appended to a shared public record and wherein the shared public record is a block chain. These limitations further define the abstract idea and are rejected under the same rational of claim 1. The claims merely amounts to the application or instructions to apply the abstract idea on a generic processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer.
Accordingly, claims 1-6 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Evans US 20090145972 A1 discloses “Devices and methods for biometric authentication of a user during financial transactions are provided. In one aspect, a payment processor device comprising a biometric input sensor configured to receive user biometric information; a biometric verification processor configured to authenticate the input user biometric information; and a communication element configured to activate when the biometric information entered into the biometric verification system is authenticated and maintain an inactive status for the communication element on the payment processor device when the biometric information entered into the biometric verification system is not authenticated”.
Baratelli US 6325285 B1 discloses "a system and method that confirms the identity of an individual presenting a smart card using a biometric, but does not require any of the individual's biometric information to be collected or stored by a reader or other device that is outside of the individual's control".
Feigelson US 20130166455 A1 discloses “a physical device carries value and can be physically delivered in a transaction. The physical device includes a representation of the value carried by the physical device. The representation is usable to transfer the value from the physical device to a digital domain. A security feature can change from a state indicating that the value carried by the physical device has not been compromised to a state indicating that the value carried by the physical device may have been compromised. The change in state is detectable, the representation of the value carried by the physical device being inaccessible except in a manner that causes the security feature to change state”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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