Acknowledgements
This communication is in response to applicant’s response filed on 07/21/2026.
Claims 1, 13, and 15 have been amended.
Claims 1-20 are pending and have been examined.
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
Regarding applicant’s arguments:
Applicant’s arguments, see pgs. 7-10, filed 07/21/2026, with respect to the rejection(s) of claims 1, 13, and 15 under Claim Rejections - 35 USC § 103 that the combination of Navarro in view of Hoggard does not teach the amended limitations, specifically, “validating the token for a transaction associated with the customer by accepting the token validation request exclusively from a registered financial institution (FI) server and denying token validation requests received from retailers and customers” in claim 1; “accepting token authentication requests exclusively from a known and registered financial institution (FI) via a corresponding FI server, and denying token authentication requests received from retailers or customers” in claim 13; and “retaining the secure token exclusively on a cloud-based server without transmitting the secure token to the customer or over any network, such that the secure token is created, managed, and authenticated solely by the cloud-based server; authenticating the secure token in connection with a financial transaction involving the customer account by accepting authentication requests exclusively from a registered financial institution and denying authentication requests from retailers and customers” in claim 15 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, the amendments made to claims 1, 13, and 15 have resulted in a new Double Patenting Rejection. More detail is provided below.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/392,531 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets comprise the inventive concept of receiving conditions for a token associated with a customer; generating a smart contract from the conditions; initiating the smart contract on a blockchain (BC) linked to the token; validating the token for a transaction associated with the customer by accepting the token validation request exclusively from a registered financial institution (FI) server and denying token validation requests received from retailers and customers; and when the token is authenticated based on the validating, causing the smart contract to evaluate real-time information for the transaction against the conditions on the BC and return an indication of authorization which corresponds to a transaction authorization or a transaction denial for the transaction.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The independent claim 1 contains allowable subject matter. As per claim 1, United States Patent Application No. 20230419309 to Navarro teaches an example operation may include one or more of storing transaction content from transactions executed via one or more fiat payment accounts and one or more crypto accounts of a digital wallet of a user, identifying historical usage characteristics of the one or more fiat payment accounts and the one or more crypto accounts from the stored transaction content, creating a security token for the user and embedding the historical usage characteristics within a storage area of the security token, executing a blockchain consensus process among a plurality of blockchain peers of a blockchain network to verify the security token, and committing the security token to a blockchain ledger of the blockchain network in response to verification of the security token. In addition, United States Patent Application No. 20260120081 B1 to Jurss teaches a method includes transmitting a verification request comprising a wallet account identifier associated with a digital wallet to a smart contract on a blockchain network or a smart contract application associated with the smart contract. The smart contract or the smart contract application verifies the wallet account identifier using a blockchain on the blockchain network. The method also includes receiving from the smart contract on the blockchain network or the smart contract application, a verification response verifying the wallet account. The method further includes initiating transmitting to an authorizing entity computer, an authorization request message comprising a credential associated with the wallet account identifier. In addition, United States Patent Application No. US 20200118131 to Diriye teaches an example operation may include one or more of receiving, by a blockchain node, a request to transfer an asset, generating a blockchain transaction, obtaining one or more rules from a smart contract corresponding to a smart contract identifier, and comparing one or more parameters to the one or more rules to obtain a risk level. In response to the risk level being greater than a threshold, the example operation includes not executing the blockchain transaction. In response to the risk level not being greater than the threshold, the example operation includes executing the transaction. The request includes the smart contract identifier and the one or more parameters. The asset includes one of a trade item or a service to be performed. The blockchain transaction includes the smart contract identifier and the one or more parameters. In addition, United States Patent No. US 20220005023 to Angelos teaches a method that utilizes a mapping between a blockchain address and a payment credential. In some embodiments, the mapping may have been previously generated based on blockchain data (e.g., one or more blockchain tokens) associated with a blockchain address and a previously provided set of conditions. An authorization request message is later received that includes the payment credential. The blockchain address may be retrieved from the mapping and it may be determined whether the set of conditions have been met. One or more operations may be executed based on determining the set of conditions have been met. In addition, PCT Patent Application No. WO2024205569 to Jain teaches a method for providing interactive recording networks is disclosed. Multiple separate local networks can be connected through a central network. Digital tokens can be used to perform transfers from a first local network across the central network to a second local network. Digital tokens can be redeemed, and digital tokens can be verified using counter values. In addition, PCT Patent Application No. WO2024215307 to Naik teaches a method includes receiving cryptocurrency account information associated with a digital asset account hosted by a cryptocurrency exchange, generating a token associated with the cryptocurrency account information, receiving a unique identifier from an issuer system, wherein the unique identifier is associated with a fiat-based asset account hosted by the issuer system, linking the token to the unique identifier, and storing the token in a token vault of the payment network. The method can further include displaying the cryptocurrency account information and the fiat-based account information based on the token via a user device to display. The method can further include generating a machine-readable code associated with the token based on a user input, wherein the machine-readable code initiates a transaction authorization request based on the cryptocurrency account information and the fiat-based account information when registered by an acceptance device.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim 1, validating the token for a transaction associated with the customer by accepting the token validation request exclusively from a registered financial institution (FI) server and denying token validation requests received from retailers and customers; and when the token is authenticated based on the validating, causing the smart contract to evaluate real-time information for the transaction against the conditions on the BC and return an indication of authorization which corresponds to a transaction authorization or a transaction denial for the transaction.
Claims 2-12 are dependent on claim 1 and contain allowable subject matter for the same reasons stated above.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim 13, accepting token authentication requests exclusively from a known and registered financial institution (FI) via a corresponding FI server, and denying token authentication requests received from retailers or customers; and causing the smart contract to evaluate the authorization conditions and provide an indication of authorization based on real-time information provided for a transaction of the customer from a payment manager, wherein the payment manager is determining whether to provide a payment to a retailer for the customer during the transaction, wherein the indication of authorization corresponds to a transaction authorization or a transaction denial relied upon by the payment manager for authorizing or denying the payment of the transaction.
Claims 14 is dependent on claim 13 and contain allowable subject matter for the same reasons stated above.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim 15, retaining the secure token exclusively on a cloud-based server without transmitting the secure token to the customer or over any network, such that the secure token is created, managed, and authenticated solely by the cloud-based server; authenticating the secure token in connection with a financial transaction involving the customer account by accepting authentication requests exclusively from a registered financial institution and denying authentication requests from retailers and customers; and upon successful authentication of the secure token, executing the distributed contract using transaction data to determine whether to authorize or deny the financial transaction.
Claim 16-20 are dependent on claim 15 and contain allowable subject matter for the same reasons stated above.
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over U.S. Patent App. 18/392,531 (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application will determine what form 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/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 COURTNEY JONES whose telephone number is (469)295-9137. The examiner can normally be reached on 7:30 am - 4:30 pm CST (M-Th).
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/COURTNEY P JONES/Primary Examiner, Art Unit 3699
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