DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 06/03/2026.
Claims 1, 3, 5, 7, and 8 are amended.
Claims 4, 9-14 are cancelled.
Claims 15-19 are new
Claims 1-3, 5-8 and 15-19 are pending.
Claims 1-3, 5-8 and 15-19 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 .
Response to Arguments
Applicant's arguments filed 06/03/2026 have been fully considered but they are not persuasive.
101
Applicant argues “these additional elements provide an improvement to the technical field of secure data exchange in a distributed computer network. For example, amended claim 1 provides a specific technological improvement of securely transferring electronic files in a computer network by combining cryptographically signed electronic files, recipient-side validation of signature data using public keys, validation that a processing time has not passed an expiration time associated with the electronic file, and detection of unauthorized transfers by identifying multiple signatures generated by the same key”. Examiner disagrees.
First, the claim limitations do not recite the elements Applicant argues for, for example, there are no combined cryptographically signed electronic files, there is an electronic file that is signed twice, which is not a technical improvement. Validating signatures is part of security, but again not a technical improvement, nor is checking that a duration of time has not expired or determining whether there is an unauthorized transfer. Applicant’s limitations have combined validation schemes for a business process, and the argument for “improvement to the technical field of secure data exchange” is an improvement to a business process, “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” MPEP 2106.05(a) (II)
Secondly, it is unclear what technology or technical field are recited in the claim is as the “second entity” can be a person and the recited “ledger”, which is not a decentralized ledger, as argued by Applicant, is used as storage. The rejection is maintained.
112
Due to Applicant’s amendments, prior 112 rejections are withdrawn.
103
Applicant argues “there is no motivation to combine Fritzhanns and Murdoch in the manner alleged by the Office Action.” Examiner disagrees.
First, the combination of Fritzhanns and Murdoch teaches the recited limitations and, secondly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Fritzhanns(¶ 72), which teaches “the range verification is simplified to only two verification steps, namely (1) whether the monetary amount added to the incompletely masked electronic coin data set belongs to this masked electronic coin data set and (2) whether the ownership of the modified (unmasked) electronic coin data set is proven” and Murdoch(¶ 120), which teaches “the signature 630 is typically a cryptographic mechanism (such as a digital signature) that is used to detect whether the verifiable claim or credential 600B has been tampered with since the time that the verifiable claim or credential 600B was issued” in order to provide identity verification and determine if information has been tampered with (Murdoch ¶ 2-4, 120).
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 1-3, 5-8 and 15-19 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 a method, and claim 8 is directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “generating an electronic file … adding first signature data … adding second signature data … recording … in a ledger… validating… validating… and determining presence or absence of an unauthorized transfer of the electronic file ….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, commercial interactions, for example, contracting in creating a contract with the parties signature, recording the contract and evaluating whether the contract was sent to an authorized party. 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.
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 “generating an electronic file … adding first signature data … adding second signature data … recording … in a ledger… validating… validating… and determining presence or absence of an unauthorized transfer of the electronic file ….” 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 contracting 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, 5-7 and 15-19 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.
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, 3, 5-7 and 15-19 are also rejected.
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 1-3, 5-8 and 15-19 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.
Claims 1 and 8 recite “by determining whether the ledger stores data for the electronic file corresponding to multiple signatures generated by a same key. ” According to the disclosure (¶ 66, 103, 104, 186, 227) “That is, the seller 5 determines the presence or absence of the unauthorized transfer of the electronic currency 10 on the basis of at least the contents recorded in the ledger 8….As described above, the consumer 6B adds signature data generated by using a private key 26AB of the consumer 6B to the electronic currency 10 in order to transfer the electronic currency 10 to the seller 5 (the second entity) from the consumer 6B (the first entity).” The disclosure makes no mention of multiple signatures generated by a same key nor determining whether the ledger stores data for the electronic file corresponding to multiple signatures generated by a same key. There is no written description support for the recited limitations. Dependent claims 2, 3, 5-7 and 15-19 are also rejected.
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 1-3, 5-8 and 15-19 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “a step of validating, by the second entity using a public key associated with the private key of the first entity, the second signature data in the electronic file; a step of validating, by the second entity, that a processing time of the electronic file has not passed an end time corresponding to an expiration date of the electronic file;”, claim 8 recites “A system configured to perform operations comprising: … validating, by the second entity using a public key associated with the private key of the first entity, the second signature data in the electronic file; validating, by the second entity, that a processing time of the electronic file has not passed an end time corresponding to an expiration date of the electronic file “ and claim 19 recites “wherein the operations further comprise collecting, by the central entity, the electronic file….”The claims are unclear and indefinite. For claim 1, the claim is unclear and indefinite as to whether the other claim limitation are performed by the “second entity” and if not, the claim is unclear and missing essential entities to the method steps. For claim 8, the system does not list any structural elements to the system, the claim is therefore unclear whether the “second entity” is the entire system and therefore performing all the claimed functions. For claim 19, which is under the system of claim 8, the “central entity” is not described to be part of the system and therefore the functions of the “central entity” are outside the scope of independent claim 8. The claim language is unclear and indefinite. Dependent claims 2, 3, 5-7 and 15-19 are also rejected.
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 1-3, 5-8 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fritzhanns et al. (US 20230093581) (“Fritzhanns”), and further in view of Murdoch et al. (US 20230177487) (“Murdoch”).
Regarding claims 1 and 8, Fritzhanns discloses generating an electronic file to which a proprietary nature set in advance is imparted (¶ 149-156, 172-175, 194, 215);
Fritzhanns – The electronic coin data set can be represented, for example, in the form of a file. A file consists of related data stored on a data carrier, data memory or storage medium. Each file is initially a one-dimensional string of bits, which are normally interpreted as a group of byte blocks. An application program (application) or an operating system itself interprets this bit or byte sequence as, for example, a text, an image or a sound recording… In this case, an electronic coin data set Ci is generated in an issuing entity 1, for example a central bank. (¶ 172, 215)
adding first signature data generated by using a private key of a central entity to the electronic file (¶ 45, 79, 103-112, 149, 165-170, 215, 355, 362);
Claim Interpretation – According to the disclosure(Abstract; 33, 34), “A method executed by a computer for attaining an electronic currency base…Each of the electronic currencies 10 may be one electronic file. In the electronic currency base 1, the electronic currency 10 is the unit of a currency recognized by a central bank, and has authenticity and circulation trustworthiness, which are secured by an electronic signature.”
Fritzhanns – the at least one initial electronic coin data set is created exclusively by the issuing entity,… the issuing entity may sign a masked electronic coin data set with its signature when generating the electronic coin data set. The signature of the issuing entity is stored in the monitoring entity for this purpose. The signature of the issuing entity is different from the generated signature of the first terminal… the signature added in this method for the first masking mode is a first signature and a private signature key used to generate the first signature is the obfuscation amount of the corresponding electronic coin data set. In contrast, only two signatures are used for the second masking mode, namely the central bank signature for generating and deleting (=fix private key) and the signature for switching (obfuscation amount as private key). (¶ 111, 149)
adding second signature data to the electronic file to transfer the electronic file to a second entity from the first entity after the first signature data is added (¶ 36, 37, 45, 75, 81, 103-113, 139, 265);
Fritzhanns –Preferably, the electronic coin data set is transferred from the first terminal to a second terminal as part of a payment process… a signature is created for each quasi-masked electronic coin data set. The private signature key is preferably the (unmasked) obfuscation amount of the (unmasked) coin data set…. generating a signature using the obfuscation amount of the electronic coin data set; adding the signature to the quasi-masked electronic coin data set or the fully masked electronic coin data set, wherein in the monitoring entity the fully masked electronic coin data set or the quasi-masked electronic coin data set is registered with the signature… the signature added in this method (of all masking modes) is a second signature and a private signature key for generating the second signature is generated from a difference between the obfuscation amount of the electronic coin data set and the obfuscation amount for the electronic coin data set to be switched. (¶ 36, 81, 103, 113)
recording at least a part of contents of the electronic file in a ledger (¶ 118-124, 139, 145, 181-183, 249, 250);
Fritzhanns – The monitoring entity is preferably a database in which the masked electronic coin data sets are registered with corresponding processing of the masked electronic coin data set. The database may be designed as a decentralized controlled database, Distributed Ledger Technology (DLT) in English. (¶ 145)
determining presence or absence of an unauthorized transfer of the electronic file based on at least the contents recorded in the ledger by determining whether the ledger stores data for the electronic file corresponding to multiple signatures generated by a same key (¶ 52, 85, 100, 101, 111, 129, 139, 145, 151, 160-165, 215, 251-254, 276, 301, 309);
Fritzhanns – Switching, splitting and combining are different modifications to an electronic coin data set. These modifications require registering the masked coin data set in a monitoring entity. This registering in the course of the modifications causes the electronic coin data set sent by the first terminal to become invalid and to be recognized as correspondingly invalid when the first terminal makes a second output attempt…. In a preferred embodiment, a validity status of the (masked) electronic coin data set can be derived therefrom. Preferably, the validity of the (masked) electronic coin data set is noted in and by the monitoring entity. Registering the processing or processing steps may also involve registering verification results and interim verification results concerning the validity of an electronic coin data set. If a processing is final, this is indicated, for example, by corresponding markings or a derived overall marking Final processing then determines whether an electronic coin data set is valid or invalid. (¶ 52, 145)
Fritzhanns does not disclose second signature data generated by using a private key of a first entity , validating, by the second entity using a public key associated with the private key of the first entity, the second signature data in the electronic file; validating, by the second entity, that a processing time of the electronic file has not passed an end time corresponding to an expiration date of the electronic file; and
Murdoch teaches second signature data generated by using a private key of a first entity (¶ 81-86, 102, 120);
Murdoch – Accordingly, in such embodiments the key generation module 350 generates additional public keys 208 and 209 when the additional devices execute the DID creation module 330. These additional public keys are associated with the private key 206 or in some instances are paired with a new private key… The verifiable claim or credential 600B also includes a signature 630, which is generated by signing the claim 610 by a private key of the issuer. (¶ 81, 120)
validating, by the second entity using a public key associated with the private key of the first entity, the second signature data in the electronic file (¶ 60, 80, 94);
Murdoch – The DID document 210 also includes the public key 207 created by the DID owner 201 or some other equivalent cryptographic information. The public key 207 is used by third-party entities that are given permission by the DID owner 201 to access information and data owned by the DID owner 201. The public key 207 also be used by verifying that the DID owner 201, in fact, owns or controls the DID 205. (¶ 60)
validating, by the second entity, that a processing time of the electronic file has not passed an end time corresponding to an expiration date of the electronic file; and(¶ 142, 143, 160);
Murdoch – The verification module 725 also determines if the verifiable claims 741 and 751 are still valid. This is especially useful in those embodiments where the verifiable claims were issued to the requesting entity 730 at a time prior to receiving the VC requests and then stored in the identity hub or other storage as in the intervening time until the VC requests are received the verifiable claims could become invalid for various reasons. In one embodiment, the verification module 725 analyzes duration information metadata such as duration information metadata 623 included in the verifiable claims 741 and 751 to determine if the verifiable claim has expired and is thus no longer valid. (¶ 142)
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 Fritzhanns and Murdoch in order to provide identity verification and determine if information has been tampered with (Murdoch ¶ 2-4, 120).
Regarding claims 2 and 15, Fritzhanns discloses wherein determining the presence or absence of the unauthorized transfer of the electronic file includes determining whether there is a record that the electronic file is transferred to each of a plurality of entities from the first entity in association with the electronic file (¶ 85-88, 139, 215, 254-260, 301).
Regarding claims 3 and 16, Murdoch teaches wherein the operations further comprise deleting the electronic file stored at the first entity in response to transmitting the electronic file from the first entity to the second entity and receiving back the electronic file to which third signature data generated by using a private key of the second entity has been added (¶ 84-88).
Regarding claims 5 and 17, Murdoch teaches wherein the electronic file includes setting of the expiration date (¶ 88, 123-125, 141-144, 160).
Regarding claims 6 and 18, Fritzhanns discloses wherein the operations further comprise comparing the contents of the electronic file with the contents recorded in the ledger, which is executed after the second entity receives the electronic file from the first entity (¶ 85, 245-265).
Regarding claims 7 and 19, Fritzhanns discloses wherein the operations further comprise collecting, by the central entity, the electronic file when the expiration date of the electronic file is expired (¶ 28, 150-152, 169).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fletcher (US 20230109544) teaches generating the document and second signatures with blockchain.
Burley et al. (US 20250131134) teaches generating the document and second signatures with blockchain.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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