DETAILED ACTION
Claim Status
This is first office action on the merits in response to the application filed on 5/20/2025.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-17 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 5/20/2025 is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory 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 nonstatutory 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); In re Thorington, 418 F.2d 528, 163 USPQ 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,333,536. Although the claims at issue are not identical, they are not patentably distinct from each other because it recites the additional features of upon receiving two or more change-lock messages which are signed using the same digital key that matches the current digital lock from the digital book, accepting, by the bookkeeping computer system, at most one change-lock message and rejecting the other message(s) to prevent double spending by using timestamps of the change-lock messages or a predetermined priority rule. Since U.S. Patent No. 12,333,536 and the claims at issue of the present application perform similar functions, it would have been obvious to a person of ordinary skill in the art to modify claims 1-15 of U.S. Patent No. 12,333,536 by removing the additional features. It is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1963) Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Thus, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Allowable Subject Matter
Claim(s) 1-17 would be allowable if rewritten or amended overcome the rejection(s) under Double Patenting set forth in this Office Action.
As per claim 1, the closest prior art of record, Pettit (WO 2021213920 A1) discloses method for implementing a digital coin system using a blockchain, teaching issuing a multitude of digital coins, each digital coin comprises: a face value, and a digital lock and a matching digital key which are a pair of public key and private key, respectively, generated using Public-key cryptography; using a multitude of digital wallets for coin owners to store and transfer digital coins, each digital wallet comprises: a computer storage device to store digital keys of digital coins owned by a coin owner; a digital wallet software to send and receive private payment messages wherein each private payment message comprises the digital key of a digital coin. In addition, Bougalis (US 20200202349 A1) discloses multiple asset transactions, teaching a digital wallet software to send messages wherein each message comprises a digital signature signed using the digital key of the coin previously received from a private payment message, and using Public-key cryptography to generate a new digital key for the digital coin. In addition, Chan (WO 2018189634 A1) discloses securing blockchain transaction based on undetermined data, teaching a change-lock messages.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim: transmitting, by the first digital wallet, a pay-to-the-order-of message comprising the serial number of the digital coin, an identity of the intended payee, and a digital signature signed using a current digital key of the digital coin and public-key cryptography; generating, by the second digital wallet using public-key cryptography, a new digital lock and a new digital key for the digital coin; creating, by the second digital wallet, a change-lock message comprising the serial number of the digital coin, the new digital lock of the digital coin, and a proof of identity of the payee; transmitting, by the second digital wallet using the communication channel, the change-lock message to the bookkeeping computer system; receiving, by the bookkeeping computer system, the pay-to-the-order-of message and the change-lock message; retrieving, by the bookkeeping computer system using the serial number of the digital coin, a current digital lock of the digital coin from the digital book; verifying, by the bookkeeping computer system using public-key cryptography, that the digital signature was signed using a digital key that matches the current digital lock of the digital coin; verifying, by the bookkeeping computer system using the proof of identity of the payee, that the change-lock message is authentic and from the intended payee; and upon successful verification of the digital signature and the change-lock message, replacing, by the bookkeeping computer system, the current digital lock of the digital coin in the digital book with the new digital lock from the change-lock message and sending a confirmation to the second digital wallet to confirm that the new digital lock has been recorded in the digital book.
Claims 2-7 are dependent on claim 1 and would be allowable for the same reasons stated above. In addition, claim 8 is analogous to claim 1, and thus would be allowable for the same reasons stated above. Claims 9-12 are dependent on claim 8 and would be allowable for the same reasons stated above. In addition, claim 13 is analogous to claim 1, and thus would be allowable for the same reasons stated above. Claims 14-17 are dependent on claim 13 and would be allowable for the same reasons stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAY LEE whose telephone number is (571)272-3309. The examiner can normally be reached Monday-Friday 8-5pm EST.
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 Patel can be reached at (571)270-1492. 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.
/CLAY C LEE/Primary Examiner, Art Unit 3699