DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/21/2025 has been entered.
2. This Non-Final Office Action is in response to Applicant’s RCE filing on 10/21/2025. Claims 1-2 are currently pending, with claim 2 being newly added. Accordingly, claims 1-2 are examined below. The earliest effective filing date of the present application is 11/22/2021.
Notice of Pre-AIA or AIA Status
3. The present application is being examined under the AIA first to file provisions.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture, or composition of matter. Claims 1-2 is a machine (systems or devices).
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 1 recites the following abstract concepts that are found to include “abstract idea”:
1. A physical secure environment (PSE) system comprising:
a plurality of PSE storage facilities including an origin PSE storage facility and a target PSE storage facility;
a PSE processing facility configured to convert raw precious metal into PSE standardized precious metal units, each of which has specific uniform characteristics including a precious metal type, a material quality, and a weight;
a PSE certification facility configured to certify each of the PSE standardized precious metal units as a PSE certified precious metal unit and apply a unique serial number thereon; and
a PSE service center configured to:
receive an assignment request form from a PSE account holder;
confirm the assignment request form with an assignor PSE account holder and an assignee PSE account holder;
determine if there is a difference in location between the origin PSE storage facility and the target PSE storage facility from the assignment request form,
wherein if no location difference is determined, then the PSE service center removes the assignor PSE account holder from ownership information of a certified precious metal unit record in a certified precious metal unit registry and updates an account of the assignor PSE account holder and an account of the assignee PSE account holder;
wherein if the difference in location is determined, then determine certified precious metal units at the target PSE storage facility that are unassigned or for sale;
determine a surcharge cost or credit associated with an assignment indicated in the assignment request form taking into account differences in processing related value of PSE precious metal units and storage costs per precious metal unit between the target PSE storage facility and the origin PSE storage facility; and
communicate the surcharge cost or credit of the assignment to the assignor PSE account holder and the assignee PSE account holder respectively;
wherein if the surcharge cost or credit is a cost to the assignor PSE account holder, the assignor either ACH/IAT or wires currency to the PSE service center to cover the cost, or authorizes the PSE service center to deduct a cost equivalent value from the certified precious metal units of the account of the assignor PSE account holder, and
wherein if the surcharge cost or credit is a credit to the assignor PSE account holder, the PSE service center credits the account of the assignor PSE account holder in an amount of the credit and updates the certified precious metal unit record in the certified precious metal unit registry via the PSE service center and updates the account of the assignor PSE account holder accordingly.
Claim 1 is directed to a series of steps for performing a transaction based on transfer of assignment, which is a commercial/legal interaction and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); thus, grouped as a certain method of organizing human interactions. Thus, the claim recites an abstract idea. See MPEP §2106.4(a).
Step 2A – Prong 2: Can the Judicial Exception Recited be integrated into a practical application
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
This judicial exception is not integrated into a practical application because PSE service center merely generically recited computer environment (See Spec. [0071].) that do not add a meaningful limitation to the abstract idea because they amount to simply the abstract idea on a generic computer. Further, the PSE storage facilities, PSE processing facility, and the PSE certification facility as claim amount to no more than generically linking the abstract idea to technologic environment of gold processing. See MPEP §2106.05. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B – Significantly More Analysis
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination PSE service center amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Further, the PSE storage facilities, PSE processing facility, and the PSE certification facility as claim amount to no more than generically linking the abstract idea to technologic environment of gold processing. See MPEP §2106.05. Thus, claim 1 is not patent eligible.
Dependent claim 2 fails to provide additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, claim 2 is rejected for the same reasons as stated in the rejection from independent claim from which they depend. Examiner notes as currently claimed that the actions taken by claim 2 under BRI would encompass steps performed by a human during the processing (rule following or completing a transaction).
Allowable Subject Matter
6. The following is a statement of reasons for the indication of allowable subject matter:
The reason for allowable subject matter of claims 1-2 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. The nearest art, Krishnan 10,970,549 and Turk 7,143,062, does not teach determine if there is a difference in location between an origin PSE storage facility and a target PSE storage facility from the assignment request form, wherein if no location change is determined, then the PSE service center removes the assignor PSE account holder from ownership information of a certified precious metal unit record in a certified precious metal unit registry and updates an account of the assignor PSE account holder and an account of the assignee PSE account holder. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant' s claimed invention.
Response to Arguments
7. Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Applicant argues the claims are unconventional elements that confine the claim to a particular useful application of the abstract idea per the allowable subject matter indicated by Examiner.
Examiner disagrees. MPEP §2106.05 states:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
Applicant’s claims are directed towards an abstract idea. The additional elements do not add a practical application nor significantly more. The “unconventional” nature of the claim is wholly within the abstract idea. Applicant’s position that the issuing of a certificate for the physical good is transformative is not persuasive. As this is the abstract idea of bonds, stocks, and certificates, which are commercial and legal documents representing a material good. It did not transform the good (gold) into a certificate; it represents the good with a certificate.
Examiner maintains position.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited, PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JARED WALKER whose telephone number is (303)297-4407. The examiner can normally be reached Monday-Thursday 9:00 AM -5:00 PM CT.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627 Michael.walker@uspto.gov