DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-33 are pending. Claims 1 and 17 are in independent forms.
Information Disclosure Statement
3. The information disclosure statements (IDS's) submitted on 04/08/2025, 08/21/2025, and 02/17/2026 are in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
4. The drawings filed on 04/08/2025 are accepted by the examiner.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 1-11, 13-27, and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Paya et al. US Patent No. 11,501,370 (hereinafter Paya) in view of Abramowitz US Patent Application Publication No. 2016/0112445 (hereinafter Abramowitz).
Regarding claim 1, Paya discloses a method of using an electronic device (Fig. 26, electronic devices 3202), the method comprising:
“storing an asset by the electronic device in a second electronic device” (see Paya column 87, lines 30-40, column 85, lines 25-27, a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a, mobile device; responsible for storage of digital assets, and secure storage system computers and/or user devices);
“wirelessly communicating by the electronic device with the second electronic device responsive to said storing” (see Paya col. 35, lines 14-16,column 87, lines 30-40, column 34, lines 4-15, Fig 1, column 23, lines 44-46, a digital asset exchange… may allow users to sell digital assets, and a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a mobile device, and digital asset market place, user devices 105 may be operatively connected to each other through a data network 125, such as the Internet, a wide area network, a local area network, a telephone network, dedicated access lines, a proprietary network, a satellite network, a wireless network, a mesh network, or through some other form of end-user to end-user interconnection, which may transmit data and/or other information. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“providing by the electronic device a software update to the asset that is stored in the second electronic device” (see Paya col. 81, lines 51-56, customized software e.g. software that modifies the standard digital asset protocols);
“wirelessly receiving a notification by the electronic device from the second electronic device regarding an attempt to access the asset that is stored in the second electronic device or regarding an attempt to tamper with the asset that is stored in the second electronic device” (see Paya col. 200, lines 15-59, column 23, lines 44-46, In a step S2806, the automatic transaction system 2815 may access, from one or more digital asset exchanges 2805, transaction data, which may include price data, associated with one or more digital assets. The automatic transaction system 2815 may store transaction data 2825 in one or more databases. The transaction data may be fetched or otherwise received, e.g., using APIs or data feeds from one or more exchanges 2805 or exchange agents. In a step S2808, the automatic transaction system 2815 may evaluate the digital asset transaction data according to the generated transaction rules. In a step S2810, the automatic transaction system 2815 may perform one or more digital asset transactions according to the transaction rules. Transactions may be performed, initiated, and/or verified by a transaction module 2820. The digital asset transactions may only be performed when one or more conditions are satisfied. In embodiments, an alert of a potential transaction and/or a request for authorization may be sent to a user before automatically performing a transaction. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“wirelessly receiving a status by the electronic device from the second electronic device regarding a state of the asset” (see Paya col. 61, line 30-col. 62, line 20, column 23, lines 44-46, individual auction-only and continuous order book market participants may be notified their order has been filled via an email, sms, push notification, or other message and/or a status update on their activity feed. In embodiments, the same alerting system may be used for continuous order book execution. In a step S3150, one or more exchange computers comprising an exchange computer system may receive from a digital asset buyer acceptances of transaction terms comprising a digital asset price and a quantity of digital assets. A data incident or data breach may occur, causing a risk to digital assets owned by one or more customers of the digital asset exchange 6110. In the context of the process described in connection with FIGS. 63A-D, the digital asset computer exchange system 6102 may next determine whether the first transaction request was caused by the security incident. the digital asset computer exchange system 6102 may determine that the first transaction request was the cause of the detected security incident. For example, the second transaction request may have been the result of an unauthorized individual accessing the first customer's 6202 account with the digital asset exchange 6110. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“evaluating by the electronic device a time-varying value associated with the asset and calculating an amount of money that is to be paid for a service that is provided for the asset that is stored” (see Paya col. 178, lines 16-43, transaction data may be evaluated from a plurality of reference periods to determine whether the data satisfies qualification criteria. In embodiments, transaction data to be qualified must satisfy qualification criteria for at least a specified period of time, which may be sub-divided into reference periods. For example, qualified transaction data may be determined for reference periods of 15 minutes, and to be a qualified exchange, the exchange must have qualified transaction data for an aggregate of at least 10 hours (40 reference periods) over a 24-hour tracking period. In embodiments, if an exchange satisfies each of the criteria examined in this exemplary process, it may be considered a qualified exchange for the tracking period over which it was examined. The determination of qualified exchanges may be performed at the end of each tracking period or on a rolling basis (e.g., re-evaluated at the end of each reference period));
Paya does not explicitly discloses periodically examining by the electronic device, a time that has lapsed since said storing.
However, in analogues art, Abramowitz discloses periodically examining by the electronic device, a time that has lapsed since said storing (see Abramowitz par. 0042, an asset storing trade secrets can have an increased damage value if the asset is vulnerable to, e.g., more than one exploit, less complex exploits, and/or widely known exploits. Based at least on a damage value associated with an asset, the technology, in some embodiments, is configured to dynamically determine an amount of insurance for sufficiently insuring against the occurrence of the cyber-attack. In various embodiments, the technology automatically and periodically performs real-time security audits to continuously or semi-continuously reassess a company's vulnerability to new cyber threats and dynamically determine new damage values and, in response, corresponding new recommendations for insurance coverage).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the application to incorporate the teachings of Abramowitz in to the system of Paya in order to include dynamically and periodically determining one or more new vulnerabilities and, in response to determining the one or more new vulnerabilities, assigning a new risk rating and determining one or more new financial instruments for insuring against an occurrence of a new cyber attack based on the one or more new vulnerabilities (see Abramowitz par. 0059).
Regarding claims 2 and 18, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim l 7,
Paya further discloses wherein said storing an asset by the electronic device in a second electronic device relates to a business operation comprising operating a business, a marketplace and/or an exchange (see Paya col. 35, lines 14-16, col. 87, lines 30-40, col. 34, lines 4-15, A digital asset exchange, such as a digital math-based asset exchange, may allow users to sell digital assets in exchange for any other digital assets or fiat currency and/or may allow users to sell fiat currency in exchange for any digital assets. a digital wallet may be a computer software wallet, which may be installed on a computer. The user of a computer software wallet may be responsible for performing backups of the wallet, e.g., to protect against loss or destruction, particularly of the private and/or public key. In embodiments, a digital wallet may be a mobile wallet, which may operate on a mobile device (e.g., mobile phone, smart phone, cell phone, iPod Touch, PDA, tablet, portable computer, to name a few). A digital asset market place, such as a Bitcoin market place, can comprise various participants, including users, vendors, exchanges, exchange agents, and/or miners/mining pools).
Regarding claims 3 and 19, Paya in view of Abramowitz discloses the method of Claim 2, the electronic device of Claim 18,
Paya further discloses wherein said operating a business, a marketplace and/or an exchange comprises operating the business, marketplace and/or exchange on-line (see Paya col. 23, lines 26-50, a digital asset network, such as a Bitcoin network, may include one or more digital asset exchange 130, such as Bitcoin exchanges (e.g., BitFinex, BTC-e). Digital asset exchanges may enable or otherwise facilitate the transfer of digital assets, such as bitcoin, and/or conversions involving digital assets, such as between different digital assets and/or between a digital asset and non-digital assets, currencies, to name a few. Like the user devices 105, digital asset exchanges 130, transmitters 132, and exchange agents 135 may be connected to the data network 125 through wired, wireless, or other connections).
Regarding claims 4 and 20, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17,
Paya further discloses wherein said asset comprises a digital asset (DA) (see Paya col. 35, lines 14-16, A digital asset exchange, such as a digital math-based asset exchange, may allow users to sell digital assets in exchange for any other digital assets or fiat currency and/or may allow users to sell fiat currency in exchange for any digital assets).
Regarding claims 5 and 21, Paya in view of Abramowitz discloses the method of Claim 4, the electronic device of Claim 20,
Paya further discloses wherein said digital asset (DA) comprises a cryptocurrency and/or a Non-Fungible Token (NFT) (see Paya col. 2, lines 25-28, col. 34, lines 6-7, A digital asset token, in embodiments, may be a stable value token (such as Gemini Dollar), security tokens, and/or non-fungible token. A digital asset market place, such as a Bitcoin market place, can comprise various participants, including users, vendors, exchanges, exchange agents, and/or miners/mining pools).
Regarding claims 6 and 22, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim l7,
Paya further discloses wherein said storing an asset by the electronic device in a second electronic device comprises storing the asset in a specific location of the second electronic device (see Paya col. 87, lines 30-40, col. 85, lines 25-27, a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a, mobile device; responsible for storage of digital assets and secure storage system computers and/or user devices).
Regarding claims 7 and 23, Paya in view of Abramowitz discloses the method of Claim 6, the electronic device of Claim 22,
Paya further discloses, wherein the specific location comprises a crypto wallet (see Paya col. 87, lines 30-40 a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a mobile device; responsible for storage of digital assets).
Regarding claims 8 and 24, Paya in view of Abramowitz discloses the method of Claim 7, the electronic device of Claim 23,
Paya further discloses wherein the crypto wallet is downloaded into the second electronic device by the electronic device (see Paya col. 32, lines 5-10 downloadable software may comprises and /or provide access to a digital wallet).
Regarding claims 9, 25, and 33, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17, the electronic device of Claim 17
Paya further discloses wherein the second electronic device comprises a computer, a wearable device and/or a smartphone (see Paya col. 87, lines 30-40 a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a mobile device; responsible for storage of digital assets).
Regarding claims 10 and 26, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17,
Paya further discloses wherein said wirelessly communicating comprises communicating responsive to an attempt to access the asset or responsive to an attempt to tamper with the asset (see Paya Fig. 45 B, col. 200, lines 15-62, In a step S2806, the automatic transaction system 2815 may access, from one or more digital asset exchanges 2805, transaction data, which may include price data, associated with one or more digital assets. In a step S2810, the automatic transaction system 2815 may perform one or more digital asset transactions according to the transaction rules. In a step S2812, the automatic transaction system 2815 may transmit one or more notifications of the performed transaction to one or more user devices 2810. Notifications may be generated by a transaction module 2820. In embodiments, notifications of incomplete, pending, and/or failed transactions may be transmitted).
Regarding claims 11 and 27, Paya in view of Abramowitz discloses the method of Claim 10, the electronic device of Claim 26, Paya further discloses receiving information by the electronic device responsive to the attempt to access the asset or responsive to the attempt to tamper with the asset (see Paya Fig. 45 B, col. 200, lines 15-62, Fig. 42 A, col. 195, lines 55-59, In a step S2806, the automatic transaction system 2815 may access, from one or more digital asset exchanges 2805, transaction data, which may include price data, associated with one or more digital assets. In a step S2810, the automatic transaction system 2815 may perform one or more digital asset transactions according to the transaction rules. In a step S2812, the automatic transaction system 2815 may transmit one or more notifications of the performed transaction to one or more user devices 2810. Notifications may be generated by a transaction module 2820. In embodiments, notifications of incomplete, pending, and/or failed transactions may be transmitted. A user may subscribe for one or more notifications from a user device 2510, which may be a phone, smart phone, PDA, computer, tablet computer, to name a few. Notifications may also be received by a user device 2510).
Regarding claims 13 and 29, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17,
Paya further discloses erasing/deleting by the electronic device the asset from the second electronic device and storing the asset in one or more other devices (see Paya col. 23, lines 63-67, column 45, lines 55-57, digital assets can be transferred between one or more users or between digital asset accounts and/or storage devices…through a network such as Internet, via a computer, smartphone or other electronic device, and wallet may be destroyed after the received assets are transferred to one or more other wallets).
Regarding claims 14 and 30, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17,
Paya further discloses allowing by the electronic device the asset to be accessed/used during certain intervals of time and preventing the asset from being accessed and/or used during certain other intervals of time (see Paya col. 86, lines 65-67, col. 49, lines 39-50, digital wallets and/or the digital asset accounts associated with and/or stored by a digital wallet may be accessed using the private key, and digital asset withdrawals may be processed only at specified times or periodically e.g. in the morning and in the evening).
Regarding claims 15 and 31, Paya in view of Abramowitz discloses the method of Claim 1, the electronic device of Claim 17,
Paya further discloses storing by the electronic device the asset, partially or in whole, in a block chain (see Paya col. 1, lines 25-45, exchange of digital assets, typically those based on blockchain technology on digital asset exchanges).
Regarding claims 16 and 32, Paya in view of Abramowitz discloses the method of Claim 15, the electronic device of Claim 31,
Paya further discloses storing by the electronic device a first portion of the asset in a first block chain and storing a second portion of the asset in a second block chain (see Paya col. 15, lines 53-66, col. 23, lines 50-67, col. 28, lines 6-9, col. 98, line 66-col. 99, lines 1-15, digital asset network may timestamp transactions by including them in blocks that form an ongoing chain called a blockchain, and digital assets may be sub-divided into smaller units/bundled into blocks, and Blockchains can include a consensus generating protocol through which the network determines whether a transaction is valid, included in the ledger and in what order each transaction should be included, (a portion), consisting of some or all of the digital assets may be stored; portions of components may be stored at multiple location. Components or portions of components may be stored at multiple locations. Components may be at least digital wallets, public and/or private keys, or assets).
Regarding claim 17, Paya discloses an electronic device that is configured to perform operations comprising:
“storing an asset by the electronic device in a second electronic device” (see Paya column 87, lines 30-40, column 85, lines 25-27, a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a, mobile device; responsible for storage of digital assets, and secure storage system computers and/or user devices);
“wirelessly communicating by the electronic device with the second electronic device responsive to said storing” (see Paya col. 35, lines 14-16,column 87, lines 30-40, column 34, lines 4-15, Fig 1, column 23, lines 44-46, a digital asset exchange… may allow users to sell digital assets, and a digital wallet may be a computer software wallet, which may be installed on a computer; digital wallet may be a mobile wallet, which may operate on a mobile device, and digital asset market place, user devices 105 may be operatively connected to each other through a data network 125, such as the Internet, a wide area network, a local area network, a telephone network, dedicated access lines, a proprietary network, a satellite network, a wireless network, a mesh network, or through some other form of end-user to end-user interconnection, which may transmit data and/or other information. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“providing by the electronic device a software update to the asset that is stored in the second electronic device” (see Paya col. 81, lines 51-56, customized software e.g. software that modifies the standard digital asset protocols);
“wirelessly receiving a notification by the electronic device from the second electronic device regarding an attempt to access the asset that is stored in the second electronic device or regarding an attempt to tamper with the asset that is stored in the second electronic device” (see Paya col. 200, lines 15-59, column 23, lines 44-46, In a step S2806, the automatic transaction system 2815 may access, from one or more digital asset exchanges 2805, transaction data, which may include price data, associated with one or more digital assets. The automatic transaction system 2815 may store transaction data 2825 in one or more databases. The transaction data may be fetched or otherwise received, e.g., using APIs or data feeds from one or more exchanges 2805 or exchange agents. In a step S2808, the automatic transaction system 2815 may evaluate the digital asset transaction data according to the generated transaction rules. In a step S2810, the automatic transaction system 2815 may perform one or more digital asset transactions according to the transaction rules. Transactions may be performed, initiated, and/or verified by a transaction module 2820. The digital asset transactions may only be performed when one or more conditions are satisfied. In embodiments, an alert of a potential transaction and/or a request for authorization may be sent to a user before automatically performing a transaction. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“wirelessly receiving a status by the electronic device from the second electronic device regarding a state of the asset” (see Paya col. 61, line 30-col. 62, line 20, column 23, lines 44-46, individual auction-only and continuous order book market participants may be notified their order has been filled via an email, sms, push notification, or other message and/or a status update on their activity feed. In embodiments, the same alerting system may be used for continuous order book execution. In a step S3150, one or more exchange computers comprising an exchange computer system may receive from a digital asset buyer acceptances of transaction terms comprising a digital asset price and a quantity of digital assets. A data incident or data breach may occur, causing a risk to digital assets owned by one or more customers of the digital asset exchange 6110. In the context of the process described in connection with FIGS. 63A-D, the digital asset computer exchange system 6102 may next determine whether the first transaction request was caused by the security incident. the digital asset computer exchange system 6102 may determine that the first transaction request was the cause of the detected security incident. For example, the second transaction request may have been the result of an unauthorized individual accessing the first customer's 6202 account with the digital asset exchange 6110. Any participants in a digital asset network may be connected directly or indirectly, as through the data network 125, through wired, wireless, or other connections);
“evaluating by the electronic device a time-varying value associated with the asset and calculating an amount of money that is to be paid for a service that is provided for the asset that is stored” (see Paya col. 178, lines 16-43, transaction data may be evaluated from a plurality of reference periods to determine whether the data satisfies qualification criteria. In embodiments, transaction data to be qualified must satisfy qualification criteria for at least a specified period of time, which may be sub-divided into reference periods. For example, qualified transaction data may be determined for reference periods of 15 minutes, and to be a qualified exchange, the exchange must have qualified transaction data for an aggregate of at least 10 hours (40 reference periods) over a 24-hour tracking period. In embodiments, if an exchange satisfies each of the criteria examined in this exemplary process, it may be considered a qualified exchange for the tracking period over which it was examined. The determination of qualified exchanges may be performed at the end of each tracking period or on a rolling basis (e.g., re-evaluated at the end of each reference period));
Paya does not explicitly discloses periodically examining by the electronic device, a time that has lapsed since said storing.
However, in analogues art, Abramowitz discloses periodically examining by the electronic device, a time that has lapsed since said storing (see Abramowitz par. 0042, an asset storing trade secrets can have an increased damage value if the asset is vulnerable to, e.g., more than one exploit, less complex exploits, and/or widely known exploits. Based at least on a damage value associated with an asset, the technology, in some embodiments, is configured to dynamically determine an amount of insurance for sufficiently insuring against the occurrence of the cyber-attack. In various embodiments, the technology automatically and periodically performs real-time security audits to continuously or semi-continuously reassess a company's vulnerability to new cyber threats and dynamically determine new damage values and, in response, corresponding new recommendations for insurance coverage).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the application to incorporate the teachings of Abramowitz in to the system of Paya in order to include dynamically and periodically determining one or more new vulnerabilities and, in response to determining the one or more new vulnerabilities, assigning a new risk rating and determining one or more new financial instruments for insuring against an occurrence of a new cyber attack based on the one or more new vulnerabilities (see Abramowitz par. 0059).
Allowable Subject Matter
7. Claims 12 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Altschuler (US 2004/0078248 A1): discloses A method of protecting a company comprises providing an insurance policy to the company, the policy including terms whereby a payout may be paid to the company when the company suffers a predetermined loss in its valuation. The method also comprises receiving a premium from the company and providing a payout to the company when the company undergoes the predetermined loss in its valuation. The method may also comprise performing a situational analysis and purchasing stocks and/or stock derivatives based on the situational analysis. A data processing system for use in administering the insurance policy to protect a company from a loss in its valuation is also disclosed.
Alberth, JR. et al. (US 2007/0250393 A1): discloses methods and devices for automatically selecting which mobile communication device among two or more related mobile communication devices may establish communication or authorize a transaction for particular services or goods with an unrelated third communication device. The described method includes a first mobile communication device detecting the presence of a related second mobile communication device and authorizing a communication with a third unrelated entity, such as that of a vendor, based on the presence of the related second mobile communication device. Also described is a method of a first mobile communication device including detecting the presence of a related second mobile communication device and restricting wireless communication with a unrelated third communication device, such as that of a vendor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL AMBAYE whose telephone number is (571)270-7635. The examiner can normally be reached M-F 9:00 AM - 6:00 PM.
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, Jeffrey Pwu can be reached at (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SAMUEL AMBAYE/Examiner, Art Unit 2433
/JEFFREY C PWU/ Supervisory Patent Examiner, Art Unit 2433
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