DETAILED ACTION
This is an office action on the merits in response to the communication filed on 12/3/2025.
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 .
Claims’ Status
Claim 14-25 are canceled. Claims 1-13 and 26-32 are pending and are considered in this office action.
Response to Arguments/Comments
101 Rejection
Applicant argues that the operational steps performed in independent claim 1 are not directed to any of the abstract ideas outlined in Section I of the Revised Guidance. Examiner respectfully disagrees. Independent claim 1 indeed claims various steps that can be classified as performing a commercial interaction, i.e., authorize an electronic device to perform a first electronic payment with a first digital asset; enable a payment card to perform a second electronic payment with a second digital asset; etc. The generic computer components, i.e., a microcontroller; a portable memory device; a non-volatile flash memory; an electronic device; a payment card, are recited at a high-level of generality performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components.
Applicant further argues that there are additional elements that integrate the abstract idea into a practical application and that the present invention represents a technological solution to a technological problem. The steps in claim 1 reflect improvement that isn’t directed towards a technological improvement but instead it is directed towards business improvement. One of ordinary skill in the art knows that authorizing an electronic device to perform a first electronic payment with a first digital asset; enabling a payment card to perform a second electronic payment with a second digital asset; etc only improve the process of conducting electronic payment authorization and transaction in which the computer components are only used to automate abovesaid processes. Therefore, the rationale provided does not actually make a tie-in between the performing of the operations and an actual improvement in computer and has to be viewed as a business improvement and not a technological improvement. Furthermore, the executing of authorizing electronic payment in relation to a conventional commercial transaction are not additional element to the abstract idea. It is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited commercial interaction) is not an improvement in technology. For example, in Trading Technologies Inti 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) (Il).
Applicant argues that the claims amount to significantly more than the abstract idea.
III. The claims, under Step-2B fail to amount to significantly more than the abstract idea.
Examiner disagrees with Applicant's arguments. Examiner notes that the claims do not
include additional elements that are sufficient to amount to significantly more than the judicial
exception; Step-2B. 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.
Finally, Examiner never noted that the claims amount to well understood, routine, and conventional activity. The abstract idea is merely applied, adding insignificant extra solution activity to the exception. As such, 101 rejection is maintained.
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 1-13 and 26-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03
Per Step 1, Claim 1 is drawn to a system and claim 26 is drawn to a method, which are within the four statutory categories (i.e., a process).
Claims 1-13 and 26-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Independent claims 1 and 26 are rejected under 35 U.S.C. 101 because the claims recite an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
Independent claim recites: (claims 1 and 26 being similar in scope):
Claim 1:
authorize an electronic device to perform a first electronic payment with a first digital asset associated with one or more blocks of a blockchain and a first key of a digital wallet stored at the non-volatile flash memory, wherein the electronic device is authorized to perform the first electronic payment while the electronic device hosts the portable memory device; perform the first electronic payment in response to receiving user input at the electronic device; enable a payment card to perform a second electronic payment with a second digital asset associated with one or more blocks of a blockchain and a second key of the digital wallet, wherein the payment card is enabled to perform the second electronic payment with the second digital asset while the payment card hosts the portable memory device; and authorize the second electronic payment based on a communication exchange between the portable memory device and a remote server.
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers managing, 1) Commercial Interaction, under the Certain methods of organizing human activity, but for the recitation of generic computer components. The abstract idea, recited above, includes: authorize an electronic device to perform a first electronic payment with a first digital asset associated with one or more blocks of a blockchain and a first key of a digital wallet stored at the non-volatile flash memory; perform the first electronic payment in response to receiving user input at the electronic device; enable a payment card to perform a second electronic payment with a second digital asset associated with one or more blocks of a blockchain and a second key of the digital wallet; and authorize the second electronic payment based on a communication exchange between the portable memory device and a remote server.
If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations commercial interactions, but for the recitation of generic computer components, it falls within the Certain Methods of Organizing Human Activity – 1) Commercial Interaction, grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
The recited computing elements (claim 1: a microcontroller; portable memory device; a non-volatile flash memory; an electronic device; a payment card) are recited at a high-level of generality, i.e. as generic computing element performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)). Simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more, since it amounts to no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer, as set forth in MPEP 2106.05(f).
The other additional positive elements: “wherein the electronic device is authorized to perform the first electronic payment while the electronic device hosts the portable memory device; wherein the payment card is enabled to perform the second electronic payment with the second digital asset while the payment card hosts the portable memory device” in claim 1, which amounts to linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) or simply “applying 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)
Accordingly, these additional claim elements, alone and in combination do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner carries over the analysis from Step 2A related to the generic computing elements being no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer (MPEP 2106.05(f)). The additional claim elements are simply linking the use of the judicial exception to a particular technological environment or field of use” are mere instructions to implement an abstract idea on a computer, are carried over for further analysis in Step 2B.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense, i.e. a microcontroller; a non-volatile flash memory; an electronic device; a digital wallet; a payment card. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination:
Claims 4-12, 28-30, and 32 are further directed to additional abstract ideas because the steps performed are simply narrowing the scope of the abstract idea of claim 1 since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. For example, claim 4 further describes hosting the portable memory device when the portable memory device is inserted; claim 5 describes what happens when unauthorized access keys are detected; claim 6 on presenting notification when user accesses the keys or initiating a payment; claim 7 on matching first and second codes; claim 8 also matching first and second codes by different devices; claim 9 the requirement on authorizing the electronic device to perform the payment; claim 10 on providing an air-gapped disconnect between digital assets and the electronic device; claim 11 on accessing the digital wallet based on a seed phrase; claim 12 on reconstructing the seed phrase, which all of the limitation are narrowing the steps performed in claim 1. The other dependent claims claim 28-30, and 32 are similar in scope to the claim 4-12.
Claims 2, 3, 27, and 31 each is directed to nonfunctional descriptive material. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). Specifically, the computing system encompasses general purpose hardware and software modules.
The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the associated computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, claims 1-13 and 26-32 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record, US20220335422A1 to Pospieszalski, teaches method of a flash memory card storing computer-executable instructions that can determine a mobile device being authorized to communicate with the flash memory card when the flash memory card is inserted into a memory card slot of the mobile device. What is missing from Pospieszalski is the fact that Pospieszalski does not teach the ordered combination of: the portable memory device authorize an electronic device to perform a first electronic payment with a first digital asset associated with one or more blocks of a blockchain and a first key of a digital wallet stored at the non-volatile flash memory; enable a payment card to perform a second electronic payment with a second digital asset associated with one or more blocks of a blockchain and a second key of the digital wallet. Overall, the other closest prior arts are: 1) Sadrizadeh et al. (US20190251524A1); 2) Dorsey et al. (US8701996B2); 3) Narendra et al. (US20110073663A1). Claims 2-13 depend on claim 1; therefore they are allowable because of dependency on claim 1. In addition, claim 26 is analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above. As such, dependent claims 26-32 are also allowable for the same reasons stated above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIN Y CHOI whose telephone number is (571)272-1094 or yin.choi@uspto.gov. The examiner can normally be reached on M-F 7:30 - 5:30pm EST.
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/YIN Y CHOI/Examiner, Art Unit 3699 2/1/2026
/NEHA PATEL/
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