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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on August 25, 2025, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been 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 1-4, 6, 8-9, 11-14, 16, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,423,679 in view of U.S. Patent Pub. No. 2021/0357915 to Makrides.
Claims 1 and 11
‘679 Patent
A system for a digital asset vault, comprising: one or more processors; and non-transitory computer-readable storage encoding instructions which, when executed by the one or more processors, cause the system to:
Claim 1: A system for a digital asset vault, comprising: one or more processors; and non-transitory computer-readable storage encoding instructions which, when executed by the one or more processors, cause the system to:
receive a secret from a first wallet;
Claim 1: receive, while connected to the secure portal, data associated with the secret from a first data source of data sources, the first data source being associated with a first of the different third-party wallets;
encrypt the secret at least twice based on at least a first encryption technique provided by the first wallet and a second encryption technique different from the first encryption technique and provided by a second wallet, to provide an encrypted secret;
Claim 1: encrypt the data at least twice based on the different encryption techniques provided by the different third-party wallets to provide encrypted data, one of the different encryption techniques being provided by a second of the different third-party wallets; and
store the secret in the digital asset vault, including to decrypt and re-encrypt the encrypted secret.
Claim 1: store the encrypted data.
Makrides
transport the encrypted secret to the digital asset vault; and
¶ 113: Then the user device sends to the centralized storage for backup (1) the encrypted private key, (2) the encrypted password to the private key, and (3) the encrypted security questions
Claims 2 and 12
‘679 Patent
generate an interface, the interface including selectable options for a type of the secret.
Claim 8: generate an interface, the interface including selectable options for a type of the secret.
Claims 3 and 13
‘679 Patent
generate an interface once the secret is stored in the digital asset vault, the interface including a selectable option for accessing the digital asset vault.
Claim 9: generate an interface once the encrypted data is stored, the interface including a selectable option for accessing the digital asset vault.
Claims 4 and 14
‘679 Patent
generate an interface, the interface including a text box for entering the secret.
Claim 10: generate an interface, the interface including a text box for entering the secret.
Claims 6 and 16
Makrides
wherein the first wallet is a cryptocurrency wallet.
¶ 54: Distributed ledger consists of multiple computing nodes that independently record transactions and balances, then they agree with other nodes if the transaction should be accepted or rejected. Examples of distributed ledgers are blockchains, like Bitcoin, DAGs, Multi-chain structures, etc. Security is achieved by using cryptographic signatures made by the wallet owners holding the private key when they want to participate in transaction, and Merkle tree or hash tree structures where the next block contains the hash of the previous block and modification of a block will invalidate all blocks up to the head of the tree which ensures consistency.
Claims 8 and 18
Makrides
wherein the secret is a password.
¶ 113: Then the user device sends to the centralized storage for backup (1) the encrypted private key, (2) the encrypted password to the private key, and (3) the encrypted security questions
Claims 9 and 19
‘679 Patent
wherein the digital asset vault comprises a backup service.
Claim 7: wherein the digital asset vault comprises a backup service.
Claims 5 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,423,679 in view of Makrides and U.S. Patent Pub. No. 2016/0028698 to Antipa et al.
Claims 5 and 15
Antipa
wherein the encrypted secret is stored in the digital asset vault using hardware secure modules.
¶ 153: FIG. 21 illustrates an exemplary configuration in which the cryptographic suite management unit 112 invokes encryption operations on a platform comprising an HSM-based suite vault.
Claims 7 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,423,679 in view of Makrides and U.S. Patent Pub. No. 2019/0280866 to Zhuang et al.
Claims 7 and 17
Zhuang
wherein the secret is a cryptocurrency wallet mnemonic phrase.
¶ 10: the processor requests the security element to generate and transmit a recovery mnemonic to it and then shows the generated recovery mnemonic to the user via the information conveying unit, so that the user can record and back up the recovery mnemonic
Claims 10 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,423,679 in view of Makrides and U.S. Patent Pub. No. 2019/0245682 to Alwen.
Claims 10 and 20
Alwen
wherein the secret is decrypted using one or more of an Elliptic Curve Diffie Hellman Ephemeral scheme, a RSA-Optimal Asymmetric Encryption Padding scheme, and a Post-Quantum Cryptography scheme.
¶ 31: In alternative embodiments, the second cipher suite is an experimental cipher suite, such as a post-quantum cryptography cipher suite. According to these embodiments, the post-quantum cryptography cipher suite may be used by both the first device and the second device and include post-quantum signature and key agreement schemes.
Claims 1-2, 5-9, 11-12, and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,073,386 in view of U.S. Patent Pub. No. 2021/0357915 to Makrides.
Claims 1 and 11
‘386 Patent
A system for a digital asset vault, comprising: one or more processors; and non-transitory computer-readable storage encoding instructions which, when executed by the one or more processors, cause the system to:
Claim 1: A system for a digital asset vault, comprising: one or more processors; and non-transitory computer-readable storage encoding instructions which, when executed by the one or more processors, cause the system to:
receive a secret from a first wallet;
Claim 1: receive data from the customer associated with a categorization having the selected type from one or more data sources associated with the different third-party wallets;
encrypt the secret at least twice based on at least a first encryption technique provided by the first wallet and a second encryption technique different from the first encryption technique and provided by a second wallet, to provide an encrypted secret;
Claim 1: encrypt the data at least twice based on the different encryption techniques provided by the different third-party wallets; and
store the secret in the digital asset vault, including to decrypt and re-encrypt the encrypted secret.
Claim 1: store the data based on one of the category types.
Makrides
transport the encrypted secret to the digital asset vault; and
¶ 113: Then the user device sends to the centralized storage for backup (1) the encrypted private key, (2) the encrypted password to the private key, and (3) the encrypted security questions
Claims 2 and 12
‘386 Patent
generate an interface, the interface including selectable options for a type of the secret.
Claim 1: generate an interface displaying a plurality of types of secrets, the types of secrets including a type of secret associated with a cryptocurrency wallet and a type of secret associated with something other than a cryptocurrency wallet;
Claims 5 and 15
‘386 Patent
wherein the encrypted secret is stored in the digital asset vault using hardware secure modules.
Claim 14: wherein the data is stored in a hardware secure module.
Claims 6 and 16
‘386 Patent
wherein the first wallet is a cryptocurrency wallet.
Claim 1: generate an interface displaying a plurality of types of secrets, the types of secrets including a type of secret associated with a cryptocurrency wallet
Claims 7 and 17
‘386 Patent
wherein the secret is a cryptocurrency wallet mnemonic phrase.
Claim 4: wherein the one of the category types comprises a wallet mnemonic.
Claims 8 and 18
Makrides
wherein the secret is a password.
¶ 113: Then the user device sends to the centralized storage for backup (1) the encrypted private key, (2) the encrypted password to the private key, and (3) the encrypted security questions
Claims 9 and 19
‘386 Patent
wherein the digital asset vault comprises a backup service.
Claim 9: wherein the digital asset vault comprises a backup service.
Claims 3-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,073,386 in view of Makrides and U.S. Patent Pub. No. 2017/0011213 to Cavanagh et al.
Claims 3 and 13
Cavanagh
generate an interface once the secret is stored in the digital asset vault, the interface including a selectable option for accessing the digital asset vault.
¶ 28: The password manager device may further include a graphical user interface (GUI) to manage the password manager device's operation. In some cases, access to the password manager device may be password-protected and thus requires the user input authenticating credentials. In such cases, the GUI may allow the user to input the requisite login credentials, which may then be sent to authentication modules on the password manager device or on a separate system (e.g., authentication server).
Claims 4 and 14
Cavanagh
generate an interface, the interface including a text box for entering the secret.
¶ 59: For each of these accounts, the inputs information into registration fields using a graphical user interface (GUI) associated with the password manager, which may be a webpage hosted by the password manager system or a software application GUI installed on the user's computer. Examples of inputted information, provided by the user through the GUI's fields, may include a user name, current password, password change URL, and the required fields for changing the password.
Claims 10 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,073,386 in view of Makrides and U.S. Patent Pub. No. 2019/0245682 to Alwen.
Claims 10 and 20
Alwen
wherein the secret is decrypted using one or more of an Elliptic Curve Diffie Hellman Ephemeral scheme, a RSA-Optimal Asymmetric Encryption Padding scheme, and a Post-Quantum Cryptography scheme.
¶ 31: In alternative embodiments, the second cipher suite is an experimental cipher suite, such as a post-quantum cryptography cipher suite. According to these embodiments, the post-quantum cryptography cipher suite may be used by both the first device and the second device and include post-quantum signature and key agreement schemes.
Reasons for Allowability Over the Prior Art
U.S. Patent Pub. No. 2021/0357915 to Makrides discloses a system for storing secrets associated with a cryptocurrency wallet at a centralized database, which encrypts the received secrets. U.S. Patent Pub. No. 2011/0295707 to Gui et al. discloses a system that encrypts data according to a first encryption technique and then encrypts the data according to a second encryption technique that is different from the first encryption technique. However, neither of these references discloses a combination where a secret is encrypted once based on a first encryption technique provided by a first wallet and encrypted again using a second encryption technique different from the first encryption technique and provided by a second wallet, as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2021/0357915 discloses methods, systems, and devices for solving the technological problem of security within centralized payment systems using hybrids of cryptographically secure distributed ledger technologies and centralized payment systems. In one embodiment, a computer-based system is configured for payments using a hybrid architecture of a centralized payment system and a cryptographically secure distributed ledger technology. The computer-based system includes a centralized database, a distributed ledger, application programming interfaces (API) servers, users' devices (including customer devices and merchant devices), and a master wallet device.
U.S. Patent Pub. No. 2011/0295707 discloses a method, a system, and devices for implementing a network banking service are provided. The method includes: after an agent device establishes a connection with a Point Of Sale (POS) device, the agent device performs identification with the POS device; after successful identification, the agent device performs authentication with the POS device; after successful authentication, the agent device establishes a connection with a network banking server according to a preset address of the network banking server through wireless access to the Internet; and the agent device forwards network banking service data between the POS device and the network banking server, thereby implementing the network banking service. Therefore, it is convenient for users to use a network banking service, the functions of POS devices are simplified, and the cost of manufacturing and maintaining POS devices is reduced.
U.S. Patent Pub. No. 2017/0011213 discloses methods and systems for periodically generating and managing passwords for one or more websites of users are disclosed. The users are provided with the ability to automatically replace their old passwords with new passwords for their one or more website accounts. The users can set a pre-determined frequency at which their passwords are to be updated and replaced with new passwords. The users can further define additional one or more rules based on which their passwords are updated. The methods and systems are further configured to auto log into user's website accounts with the updated passwords.
U.S. Patent Pub. No. 2021/0051003 discloses methods, systems, and apparatus, including computer programs encoded on computer storage media, for digital transaction signing for multiple client devices using secured encrypted private keys. The system generates, by a device, a private key and public key pair. The key pair is associated with an electronic account. The device also has an associated private key and public key pair. The device generates multiple key shares of the generated private key associated with the electronic account. The device encrypts each of the multiple key shares with the public key of the device thereby creating multiple first or inner layer of encrypted key shares. The device then encrypts each of the multiple first encrypted key shares each with a separate user public key associated with a user thereby creating multiple second or outer layer of encrypted key shares. The double encrypted key shares are then distributed to the respective users having the user public key.
NPL “New Secure Approach to Backup Cryptocurrency Wallets” by Hossein Rezaeighaleh et al. (dated February 27, 2020) discloses that Bitcoin and other cryptocurrencies have become popular and motivate more hackers to steal digital funds. Users protect their private keys using crypto wallets to keep their funds safe from hackers. While the most secure option is hardware wallet, it suffers from lack of a secure and convenient backup and recovery process. Almost all existing wallets use mnemonics to back up the private keys, and a user must write down these words on a piece of paper. This approach is not only inconvenient but also problematic since the paper could be lost or stolen, resulting in a hacker recovering the keys. In this paper, we propose a new digital scheme to securely back up a hardware wallet relying on the side-channel human visual verification enabled by display screen on a hardware wallet. Using this method, we transfer the root of private keys from one hardware wallet to another wallet securely even via an untrusted terminal, such as a smartphone. At the end of this process, the user has two hardware wallets with the same private keys while she may use one of them as the main wallet and another one as a backup wallet.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
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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.
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/NILESH B KHATRI/Primary Examiner, Art Unit 3699
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