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 .
Response to Arguments
Applicant's arguments filed on 05/11/2026 have been fully considered but they are not persuasive.
Applicant is of the opinion that amendments overcome the 112(b) rejection. However, examiner respectfully disagrees. (See the rejection below).
Allowable Subject Matter
Claims 32-34 are allowable.
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 16-31 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.
Claim 16 recites “a system comprising two or more nodes, the system comprising: one or more processors that are each executable by a node in the two or more nodes”. However, this limitation was not described in the specification.
Specification discloses: Next, each of the nodes 5 of the cold wallet 2 generates a pre-signature, based on its share of the private signature key. The pre-signature generated by a given node 5 of the cold wallet 2 is thereby representative for the share of the private signature key, which is held by that node 5, but not for the shares of the private signature key which are held by the other two nodes 5 of the cold wallet 2. (See paragraph 0079). However, the specification does not describe one or more processor executable by a node.
Claims 17-31 are also rejected as each depends from claim 16.
Claim Rejections - 35 USC § 112
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 16-31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “a system comprising two or more nodes, the system comprising: one or more processors that are each executable by a node in the two or more nodes; and one or more non-transitory computer-readable medium…when executed, cause the one or more processors to perform steps comprising: …” However, the body of the claim also recite steps performed by “two or more nodes of a cold wallet”, “signing application”, and “pre-signature node”. It is unclear to one of the ordinary skills in the art that the elements such as two or more nodes of a cold wallet, signing application, and pre-signature node are part of the claimed system or not. (In re Zletz, 893 F.2d 319, 13USPQ2d 1320 (Fed. Cir. 1989), MPEP 2173.02 (III)(B)) which states “Examiners should bear in mind that "[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process”
Claims 17-31 are also rejected as each depends from claim 16.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZESHAN QAYYUM whose telephone number is (571)270-3323. The examiner can normally be reached Monday-Friday 9:00AM-6:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697
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