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 .
This communication is a First Action on the Merits responsive to Applicant’s response to election/restriction on March 12, 2026.
Claims 1-4, 9-10 have been examined in this application. Claims 5-8 are withdrawn.
No information disclosure statements (IDS) have been filed.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 and 9-10 in the reply filed on March 12, 2026 is acknowledged.
Claim Objections
Claims 1-4 and 9-10 are objected to because of the following informalities: The claims contain various grammatical errors, include various intended use limitation, and include limitations directed to software and what the software does. Software cannot carry out functions, instead it is executed by hardware to cause the hardware to execute functions/software.
Claims 9-10 are not proper claims because they are independent claims that refer to another independent claim. Claims 9-10 should be written in dependent form or should capture the entire claimed scope in independent form with no reference a previous claim.
Claims recite various abbreviations to terms without placing the abbreviations in parathesis. The abbreviations can then be used later in the claim without parenthesis. The claims sometimes utilize the abbreviations in parenthesis without the meaning of what is abbreviated. For example, step (4) recites transfer of (pKa^TEE, sKa^TEE) without writing the public-private key pair.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, and 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per claims 1, and 9-10, the claims recite, respectively, per first limitation: “randomly generating… a public-private key pair…, generating, by a private key…, a signature for a public key…, and returning the public key… and the signature… to a software system of the payer.”
The limitation has multiple issues. First, it is not known how the public-private key pair is generated and no correlation to how it is generated is found in the Specification. Second, the limitation, under the broadest reasonable interpretation is directed to generating a private key after the generation of the public-private key pair. It is not known how this private key is generated and how it is different from the already generated public-private key pair. Third, it is not known how a private key (whether the same or different than the already generated private key) can generate a signature. A private key is just data and cannot perform functions. Finally, it is not known how a software system can receive any data. Software is a collection of instructions that allow processor/hardware of a computer to perform tasks. There is no support for the software being able to receive the claimed information or how the software is able to receive such information.
Applicant may amend the claims to include how the public-private key pair is generated, clarify how the “a private key” is the same or different than the already generated private key and how it is generated if it is different. Applicant may also amend the claims to disclose which entity receives the public key and signature and further recite how the entity stores it if such storage of the data is technical to the scope.
Per claim 1 and 9-10, respectively, the claims recite sending, by the software system of the payer, the digital currency address (addr) to a software system of a payee… transmitting, by the software system of the payee, an encryption public key… to the software system of the payer. As explained above, it is not known how said software of either payor or payee can perform any of these functions. The Specification is also devoid of support that the software is capable of even performing said functions.
The remaining limitations of claim 1 are rejected under the same rational, failing to convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention and disclosure of how to carry out the claimed limitations.
Claims 9-10 are rejected under the same rational as claim 1 for reciting that said claims include claim 1. Per claims 9-10, the claims are further rejected because the correlating structure is not found that is linked to each of the claimed entities, including at least the payor and the payee. Figure 5 and related text recite that an electronic device having a processor and memory can carry out the claimed scope. However, the claimed scope is directed to at least two entities, see Figure 1, wherein each of the at least two entities comprise two sub-entities. Therefore, a clear link of the structure for each of the at least two entities is not found in the Specification. If the structure of Figure 5 is in fact the structure/device to carry out the claimed scope (i.e., claim 1 and 9-10), then how can such a single device perform functions that require functions to be carried out by two distinct and separate entities; see Figure 1 and claim 1.
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 1-4 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 which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-4 are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Per claim 1, the claim recites at pre-amble: “trusted hardware” and “step (1) randomly generating, by a trusted hardware system…” It is not clear whether the trusted hardware systems are the same or different.
Claim 1, per “step (2) calculating… and depositing by a blockchain, a digital currency…” is indefinite because at least Figure 2 depicts that the blockchain is a distinct and separate entity from the payor and payee. Therefore, the limitation directed to depositing of currency by the blockchain is outside the scope of the claim, rending the limitation/claim indefinite. The limitation is concerned with the payer and later introduces the blockchain. Each method step should be a positively recited limitation that focuses on which entity does what and how. The blockchain can be introduced as performing the depositing of the currency positively and separately to potentially overcome the rejection. Otherwise, the determination of funds can be claimed from the perspective of the payor or payee to also try and overcome the rejection.
Claim 1, per “step (4) sending, by the software system of the payer, the public keys… requesting the trusted hardware system of the payer to transfer…” it is not clear whether the sending is done by the software system of the payer or done by some other entity such as the software system of the payee.
Per claim 1, the claim recites “the hardware system of the payee.” There is insufficient antecedent basis in the claim for the limitation.
Per claim 2, the claim recites “wherein said storing.” There is insufficient antecedent basis in the claim for the limitation. Claim 1 recites “saving (pKa^TEE, sKa^TEE).” Storing does not have proper antecedent basis.
Per claim 4, the claim recites “a digital currency.” Claim 1 recites “a digital currency.” It is not clear whether the two digital currencies are the same or different.
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 1-4, and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-4, and 9-10 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1-4, and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of settling a transaction by transferring funds without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities and business relations. The abstract idea is also characterized under mathematical concepts, including mathematical relations, formulas and equations. Transfer of funds from one entity to another is a basic commercial interaction requiring the transferee to have appropriate funds and further to be authorized to transfer the funds based on business relations. The transfer of the funds is based on equations that provision the generation of data that is used to allow the transfer of funds in response to further formulas/equations being utilized to validate the transfer and settle the transaction.
Claim 1 recites:
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The judicial exception is not integrated into a practical application. The claims recite the following additional elements: A trusted hardware system, software system of a payer, a blockchain, a software system of a payee, a hardware system of the payer, the hardware system of the payee, an electronic device, one or more processors, memory for storing one or more programs, non-transitory computer-readable storage medium, computer instructions, and a processor. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as generating data, calculating data, sending and receiving data, analyzing data and outputting a result. Each of the additional limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the 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.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims further describe the abstract ides. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
The claimed scope is not clear. The claims are replete with indefinite language and conditional limitations. A full search was carried out including foreign and non-patent literature. However, no clear combination of references was deemed obvious in light of the claimed scope as a whole. The cited references, including Chinese Patent Application 111275419 to Long et al. teaches some limitations including the generation of key pairs, generating a signature via a private key, determining currency availability at a user’s account/wallet, generating a ciphertext based on key encryption, and generating a signature by signing the ciphertext. A transaction on a blockchain is executed in view of validation of user’s encrypted information and related transaction comprising private key and signatures.
However, the references do not disclose the detailed mathematical operations that are recited nor do they detail said mathematical operations between the claimed payor and payee.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha W. Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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