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 .
Drawings
2. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the POS interface with integrated biometric scanner and configured to receive a fiat based payment instrument, the API or middleware layer operatively coupled to the POS interface, the transaction data routed to the blockchain network for on-chain validations wherein routing bypasses traditional batch processing networks maintaining the transaction in its original denomination without converting to cryptocurrency, the cryptographic hash, the settlement mechanism executing smart contract on blockchain, the blockchain ledger integrating biometric data into the on-chain validation to prevent unauthorized access without intermediary custody or cryptocurrency exchange must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
4. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a settlement mechanism configured to…” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-15 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024).
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07.
The Specification discloses the following:
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Regarding claim 1: The specification fails to teach how to make and use the claimed invention without undue experimentation., “an application programming interface (API) or middleware layer operatively coupled to the POS interface and configured to route transaction data associated with the fiat-based payment instrument across a blockchain network in real-time for on-chain validation, wherein the routing bypasses traditional batch processing networks and maintains the transaction in its original fiat denomination without converting to cryptocurrency;” and “wherein the blockchain ledger functions exclusively as a real-time settlement and validation layer for the fiat transaction, integrating the biometric data into the on-chain validation to prevent unauthorized access without intermediary custody or cryptocurrency exchange.”
The Wands framework of factors and accompanying explanation include, but are not limited to:
• (A) The breadth of the claims- Although the disclosure at ¶[0067] describes a pseudocode for routing, the disclosure does not show how an API is configured to route transactions data associated with the fiat based payment instrument across a blockchain network for on-chain validation wherein the routing maintains the transaction in its original fiat denomination without converting to cryptocurrency;
• (B) The nature of the invention- The nature of the invention, i.e., a POS transaction routing system for real-time electronic fiat currency payments without cryptocurrency conversion wherein the blockchain ledger functions exclusively as a real-time settlement and validation layer for the fiat transactions, integrating biometric data into the on-chain validation to prevent unauthorized access without intermediary custody or cryptocurrency exchange requires that the Specification explain how fiat currency can be routed to the blockchain without converting to cryptocurrency first. It is noted that the Specification devotes the last five pages to preferred systems and methods without cryptocurrency conversion and does not provide a level of written description necessary to make and use this invention.
• (C) The state of the prior art- The prior art at the time the invention was filed is not such that the inventor can lean on a shared foundation and skip explanations of established technology.
• (D) The level of one of ordinary skill- One having ordinary skill in the art would not understand how to maintain the transaction in its original fiat denomination on the blockchain without converting to cryptocurrency based on the description provided in the Specification (see Spec. pages 9-13).
• (E) The level of predictability in the art-The less predictable the technology, the more detailed the disclosure should be. The Specification does not describe the elements in the claimed invention so that one can predict that an original fiat currency can be maintained on a blockchain without conversion to cryptocurrency. Note that the Specification is mostly concerned with permitting a merchant to receive FX on blockchain or cryptocurrency rather than traditional currencies and that the Specification devotes the last five pages to preferred systems and methods without cryptocurrency conversion and does not provide a level of written description necessary to make and use this invention;
• (F) The amount of direction provided by the inventor-The specification does not describe, for example, the specific steps needed to route transaction data associated with the fiat-based payment instrument across a blockchain network for on-chain validation and maintaining the transaction in its original fiat denomination without converting to cryptocurrency. The more guidance a disclosure provides, the less experimentation a skilled person needs, and the stronger the enablement case becomes;
• (G) The existence of working examples- The disclosure fails to provide a working example to demonstrate that the inventor actually built or tested the invention; and
• (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-The Specification is insufficient to enable a person skilled in the art to practice the claimed invention with only a reasonable degree of experimentation because the claimed invention requires a POS transaction routing system for real-time electronic fiat currency payments without cryptocurrency conversion wherein the blockchain ledger functions exclusively as a real-time settlement and validation layer for the fiat transactions, integrating biometric data into the on-chain validation to prevent unauthorized access without intermediary custody or cryptocurrency exchange.
In addition, it is noted that the Drawings do not reflect the claimed invention.
Claims 5 and 8 recite limitations similar to those found in claim 1 and are therefore rejected by the same rationale expressed above.
The remaining claims are rejected due to the dependency to claims 1, 5, and 8.
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.
7. Claims 1-7 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.
Re-claim 1: claim limitation “a settlement mechanism configured to execute a smart contract on the blockchain network…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
8. Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Using the language in claim(s) 1 to illustrate, the limitations of receive a fiat-based payment instrument input from a customer and capture biometric data for fraud prevention, wherein the fiat-based payment instrument is selected from a credit card, debit card, Automated Clearing House (ACH) instruction, or wire transfer; route transaction data associated with the fiat-based payment instrument across a blockchain network in real-time for on-chain validation, wherein the routing bypasses traditional batch processing networks and maintains the transaction in its original fiat denomination without converting to cryptocurrency; generate a cryptographic hash of transaction metadata including a transaction identifier, amount, timestamp, and the biometric data, and record the cryptographic hash on a blockchain ledger for immutable fraud detection and auditability; a settlement mechanism configured to execute a smart contract on the blockchain network to validate the transaction based on the cryptographic hash and ensure final delivery of the fiat value to a merchant wallet, custodial or non-custodial, in sub-second time frames, thereby reducing settlement latency compared to traditional ACH or wire transfer systems; and wherein the blockchain ledger functions exclusively as a real-time settlement and validation layer for the fiat transaction, integrating the biometric data into the on-chain validation to prevent unauthorized access without intermediary custody or cryptocurrency exchange, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interaction, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for a POS transaction routing system for real-time fiat currency payments without cryptocurrency conversion which is a commercial interaction. The mere nominal recitation of a POS interface including an integrated biometric scanner, an application programming interface (API) or middleware layer operatively coupled to the POS interface, blockchain network, payment gateway, do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements— a POS interface including an integrated biometric scanner; an application programming interface (API) or middleware layer operatively coupled to the POS interface, blockchain network, payment gateway. The POS interface including an integrated biometric scanner; an application programming interface (API) or middleware layer operatively coupled to the POS interface, blockchain network, payment gateway are recited at a high-level of generality (i.e., as a generic system performing a generic computer functions of receiving a fiat based payment instrument input from a customer and capturing biometric data, route transaction data associated with the fiat-based payment instrument across a blockchain network; generating a cryptographic hash of the transaction metadata, executing a smart contract on blockchain, integrating biometric data into the on-chain validation without intermediary custody or cryptocurrency exchange) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP §2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claims 5 and 8 and hence claims 5 and 8 are rejected on similar grounds as claim 1.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using, amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-4, 6-7, 9-15 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-15 is/are ineligible.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wolfson, Rachel. “Fiat Chain Is a Technology-It’s A Public Blockchain Without A Cryptocurrency, Says Silvio Micali.” Cryptonews. June 16, 2025-cited for its reference to the development of a new technology called “Fiat Chain,” there is not cryptocurrency associated with the Fiat chain.
US 2024/0232884 (Jayaraman)- cited for its reference to transforming resources between centralized and decentralized networks
US 10,762,506 (Cash et al.)-cited for token device for distributed ledger (blockchain) based interchange including biometric authentication at a POS.
WO 2024/072915 A1- native cryptocurrency payment system at a POS.
US 9864986 (White et al.)-cited for POS system including a biometric scanner and fiat-based payment instruments.
US 2018/0174122-(Mattingly et al.)-POS system comprising a biometrics scanner, storing a digital currency blockchain and user authentication information.
US 2018/0225657 (Agarwalla et al.)-cited for system for making an electronic payment transaction including a POS and biometric scanner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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