DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, 19/357,331, was filed on 10/14/2025, and claims priority from Provisional Application 63/708,225, filed 10/16/2024.
The effective filing date is after the AIA date of March 16, 2013, and so the application is being examined under the “first inventor to file” provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Application
This Non-Final Office Action is in response to Applicant’s communication of 10/14/2025.
Claims 1-20 are pending, of which claims 1, 11, and 20 are independent.
All pending claims have been examined on the merits.
Claim Interpretation
The Examiner interprets the acronym “ETP” in claims 1, 3-7, 10, 11, and 18-20 is an acronym for “exchange-traded products” (as defined in page 2 of the specification of the application).
The Examiner interprets that “digital currencies” are an example of “exchange-traded products”.
The Examiner interprets the term “encrypted tunnel” according to the following paragraph in page 10 of the specification (emphasis added):
Moreover, although the system 100 is described herein as being implemented with TCP/IP communications protocols, the system can also be implemented using IPX, Appletalk, IP-6, NetBIOS, OSI, any tunneling protocol (e.g., IPsec, SSH), or any number of existing or future protocols. If the network is in the nature of a public network, such as the Internet, it can be advantageous to assume the network is insecure and open to eavesdroppers.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 10/21/2025 has been considered.
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.
Claims 1, 3-7, 10, 11, and 18-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
More specifically, claims 1, 3-7, 10, 11, and 18-20 recite the acronym “ETP”, however, this acronym is not defined in any of the claims 1, 3-7, 10, 11, and 18-20.
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 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to an abstract idea, without “significantly more”.
Based on the flowchart in MPEP § 2106, Step 1 of the Alice/Mayo analysis is: “Is the claim to a process, machine, manufacture or composition of matter?”
In regards to Step 1 of the Alice/Mayo analysis, independent claims 1, 11, and 20 are apparatus claims.
For the sake of compact prosecution, we continue with the Alice/Mayo “abstract idea” analysis.
Step 2A, prong 1 of the Alice/Mayo analysis is: “Does the claim recite a law of nature, a natural phenomenon (product of nature), or an abstract idea?”
In regards to Step 2A, prongs 1 and 2 of the Alice/Mayo analysis, the abstract idea elements recited in independent claim 1 are shown in italic font. (The “additional elements” and “extra solution steps” are shown in italic and underlined font):
In regards to claim 1,
1. A system for non-custodial digital asset management, the system comprising:
an ETP platform for managing digital assets; and
a database including a non-transitory computer-readable medium including code and a controller that executes the code, the controller enabling communication between a user device and the ETP platform, the database being connected to an encrypted tunnel that is configured to protect against unauthorized access to the system.
In regards to claim 11,
11. A system for non-custodial digital asset management, the system comprising:
an ETP platform for managing digital assets;
a database including a non-transitory computer-readable medium including code and a controller that executes the code, the controller enabling communication between a user device and the ETP platform, the database being connected to an encrypted tunnel that is configured to protect against unauthorized access to the system; and
a smart contract that is connected to the database via an application programming interface.
In regards to claim 20,
20. A system for non-custodial digital asset management, the system comprising:
an ETP platform for managing digital assets;
a database including a non-transitory computer-readable medium including code and a controller that executes the code, the controller enabling communication between a user device and the ETP platform, the database being connected to an encrypted tunnel that is configured to protect against unauthorized access to the system, the database including a distributed database that stores one of (i) information related to user portfolios, (ii) market data, (iii) compliance records (e.g., KYC/AML), and (iv) transaction histories;
a smart contract that is connected to the database via an application programming interface, the smart contract autonomously governing workflow of the system by supporting execution and recording of various actions including one of (i) account registration, (ii) asset rebalancing, and (iii) asset purchases; and
a blockchain that is integrated with the ETP platform, the smart contract residing on the blockchain.
More specifically, claims 1-20 recite an abstract idea: “Certain Methods of Organizing Human Activity", specifically “Commercial or Legal Interactions (Including Agreements in the form of Contracts; Legal Obligations; Advertising, Marketing, or Sales Activities or Behaviors; Business Relations)”, as discussed in MPEP §2106(a)(2) Parts (I) and (II), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “Commercial or Legal Interactions” elements include:
“managing digital assets”.
“(i) account registration, (ii) asset rebalancing, and (iii) asset purchases”.
“protect against unauthorized access to the system”. (E.g. check for identification)
The “additional elements” include: “an ETP platform”, “a database”, “a distributed database”, “a non-transitory computer-readable medium”, “a controller that executes the code”, and “a user device”.
The “additional extra-solution elements” include: “a non-transitory computer-readable medium including code”, “stores one of (i) information related to user portfolios, (ii) market data, (iii) compliance records (e.g., KYC/AML), and (iv) transaction histories”, “recording of various actions”, and “communication between a user device and the ETP platform”.
Step 2A, prong 2 of the Alice/Mayo analysis is “Does the claim recite additional elements that integrate elements that integrate the judicial exception into a practical application?”
In regards to Step 2A, prong 2 of the Alice/Mayo analysis, this abstract idea is not integrated into a practical application, because:
The claim is directed to an abstract idea with additional generic computer elements. The generically recited computer elements (“an ETP platform”, “a database”, “a distributed database”, “a non-transitory computer-readable medium”, “a controller that executes the code”, and “a user device”) do not add a meaningful limitation to the abstract idea, because they amount to simply implementing the abstract idea on a computer. The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, such as in the following feature: “an ETP platform for managing digital assets”.
The extra-solution activities (“a non-transitory computer-readable medium including code”, “stores one of (i) information related to user portfolios, (ii) market data, (iii) compliance records (e.g., KYC/AML), and (iv) transaction histories”, “recording of various actions”, and “communication between a user device and the ETP platform”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity;
The combination of the abstract idea with the additional elements (generically recited computer elements), and/or with the extra-solution activities, does not integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo analysis is: “Does the claim recite additional elements that amount to significantly more than the judicial exception?”
In regards to Step 2B of the Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, because:
When considering the elements "alone and in combination" (“an ETP platform”, “a database”, “a distributed database”, “a non-transitory computer-readable medium”, “a controller that executes the code”, “a user device”, and “communication between a user device and the ETP platform”), they do not add significantly more (also known as an "inventive concept") to the exception, because they amount to simply implementing the abstract idea on a computer. Instead, they merely add the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
In regards to the extra solution activities (“a non-transitory computer-readable medium including code”, “stores one of (i) information related to user portfolios, (ii) market data, (iii) compliance records (e.g., KYC/AML), and (iv) transaction histories”, “recording of various actions”, and “communication between a user device and the ETP platform”), these are recognized as such by the court decisions listed in MPEP § 2106.05(d).
More specifically, in regards to the “a non-transitory computer-readable medium including code”, “storing”, and “recording” steps, see the court cases Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (storing and retrieving information in memory).
More specifically, in regards to the “communication” step, see the court cases OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network) and (presenting offers and gathering statistics), OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Moreover, in regards to “apply it”, according to MPEP § 2106.05(f)(2):
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The Examiner holds that the independent claims “use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data)” or “simply add a general purpose computer or computer components after the fact to an abstract idea”.
All dependent claims are also rejected, because they merely further define the abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7-9, and 11-20 are rejected under 35 U.S.C. §§102(a)(1) and (a)(2) as being anticipated by US-2021/0209684-A1 to Foote at al. (“Foote”. Eff. Filed on Jan. 7, 2020. Published on Jul. 8, 2021).
In regards to claim 1,
1. A system for non-custodial digital asset management, the system comprising:
an ETP platform for managing digital assets; and
(See Foote, para. [0062]: “The blockchain 113 can be based on blockchain technologies such as, for example, Ethereum, Open Chain, Chain Open Standard, etc. For a blockchain-based peer-to-peer payment network, a governing organization or consortium can control access to bank transfer services. Anyone can participate in the payment network, but in various embodiments, only users that registered with the managing organization(s) can transfer earned credits into currency via wire transfers to bank accounts. The blockchain 113 can autonomously manage workflows associated with payment processing as described in greater herein, reducing the processing load on the computer devices 102 within the system.”)
(See Foote, para. [0055]: “A pool account 110 can be included in the financial services system 100. The pool account 110 can be owned and operated by the service provider controlling the financial service system 100. The pool account 110 can include one account or more than one account capable of holding any suitable form of currency. The pool account 110 can hold currencies including cash (domestic and foreign), digital currencies (cryptocurrency, digital account balances, etc.), notes, bonds, stocks, real property, and any other types of assets. The pool account 110 works in cooperation with the digital wallet 106 to receive funds from the digital wallet 106. Additionally, the pool account 110 can issue currencies to users via the executable smart contracts 112.”)
(See Foote, para. [0076]: “A universal currency token 119 can be created by the financial services system 100 for use within the system. The universal currency token 119 can be used as a unit of an account that can be held in the user's digital wallet 106 until the funds are requested for withdrawal from the currency account 108 or the pool account 110. In some embodiments, the universal currency token 119 is only usable within the financial service system 100. In other words, in that embodiment, the universal currency token 119 is not publicly available or tradeable on an exchange. In various embodiments, the universal currency token 119 is available to the public.”)
The Examiner interprets that the “the universal currency token 119 is available to the public” is an exchange tradable product (ETP).
a database including a non-transitory computer-readable medium including code and a controller that executes the code, the controller enabling communication between a user device and the ETP platform,
(See Foote, para. [0004]: “The present invention is directed toward a financial services system that can utilize a user device and a blockchain having a blockchain ledger. In various embodiments, the financial services system includes a host database including a non-transitory computer-readable medium including code and a host controller that executes the code. The host controller can enable communication between a first digital wallet on the user device and one of a local currency account and a digital currency account to initiate a deposit via one of the currency accounts. The deposit can be assigned a transaction ID that is recorded to the blockchain ledger. The transaction ID can include a deposit currency value.”)
the database being connected to an encrypted tunnel that is configured to protect against unauthorized access to the system.
(See Foote, para. [0041]: “Moreover, although the financial services system 100 is described herein as being implemented with TCP/IP communications protocols, the system can also be implemented using IPX, Appletalk, IP-6, NetBIOS, OSI, any tunneling protocol (e.g. IPsec, SSH), or any number of existing or future protocols. If the network is in the nature of a public network, such as the Internet, it can be advantageous to presume the network to be insecure and open to eavesdroppers.”)
In regards to claim 2,
2. The system of claim 1 further comprising a smart contract that is connected to the database.
(See Foote, para. [0059]: “The smart contracts 112 can vary depending on the design requirements of the financial services system 100, the user device 102, the application 104, the digital wallet 106, and/or the blockchain 113. It is understood that the smart contracts 112 can include additional systems, subsystems, components, and elements than those specifically shown and/or described herein. Additionally, or alternatively, the smart contracts 112 can omit one or more of the systems, subsystems, and elements that are specifically shown and/or described herein. As provided in greater detail herein, the smart contracts 112 communicates with the host database 115 to perform the functions identified herein.”)
See also Figure 1, Smart Contract 112 in communication with Database 115.
In regards to claim 4,
4. The system of claim 1 further comprising a blockchain
(See Foote, para. [0045]: “The user interface (not shown) within the application 104 can include a mobile graphical user interface (not shown) that accommodates multiple currencies (international, national, digital, crypto, etc.), countries, and languages. The application 104 can make use of a dynamic back-end query layer that can be optimized using insights derived from artificial intelligence to make requests of the various service providers and the third parties. The application 104 can include a point-of-sale user interface. Additionally, the application 104 can include multiple third-party application program interfaces (APIs) to perform various application tasks. The application 104 can include a blockchain interface (not shown) for interacting with the blockchain 113.”)
that is integrated with the ETP platform.
(See Foote, para. [0076]: “A universal currency token 119 can be created by the financial services system 100 for use within the system. The universal currency token 119 can be used as a unit of an account that can be held in the user's digital wallet 106 until the funds are requested for withdrawal from the currency account 108 or the pool account 110. In some embodiments, the universal currency token 119 is only usable within the financial service system 100. In other words, in that embodiment, the universal currency token 119 is not publicly available or tradeable on an exchange. In various embodiments, the universal currency token 119 is available to the public.”)
The Examiner interprets that the “the universal currency token 119 is available to the public” is an exchange tradable product (ETP).
In regards to claim 5,
5. The system of claim 1 wherein the ETP platform includes compliance and monitoring tools that increase the likelihood that all transactions with the system comply with regulatory requirements by continuously monitoring activities within the system.
(See Foote, para. [0111]: “At step 466, the data used within the system is stored on an established PostgreSQL database platform, in a high availability configuration, with the option for georedundancy. The data is stored in compliance with current and future AML/CTL laws and are GDPR and CCPA compliant.”)
In regards to claim 7,
7. The system of claim 1 wherein the ETP platform includes real-time data integration and aggregation.
(See Foote, para. [0098]: “At step 342, a user can send a cash deposit in U.S. dollars via the user's digital wallet by way of an instant settlement network. The system by utilizing the instant settlement network, can query the various integrated third-party rates in real-time and select the most cost-effective path based on an algorithm weighing additional factors such as delivery speed.”)
(See Foote, para. [0104]: “At step 354, the payment route is dynamically determined based on the proprietary weighted average of several metrics. The system queries the various third-party rates in real-time and determines the most cost-effective path based on an algorithm weighing additional factors such as delivery speed. The dynamic determination can also factor in different transfer channels such as a blockchain in addition to wire transfers or local transfer systems.”)
In regards to claim 8,
8. The system of claim 1 wherein the database includes a distributed database that stores one of (i) information related to user portfolios, (ii) market data, (iii) compliance records (e.g., KYC/AML), and (iv) transaction histories.
(See Foote, para. [0111]: “At step 466, the data used within the system is stored on an established PostgreSQL database platform, in a high availability configuration, with the option for georedundancy. The data is stored in compliance with current and future AML/CTL laws and are GDPR and CCPA compliant.”)
In regards to claim 9,
9. The system of claim 1 wherein the database includes an encrypted partition that is configured to store encrypted user data using a cryptographic key.
(See Foote, para. [0023]: “In certain embodiments, the host database can include (i) an encrypted partition configured to store encrypted user data using a cryptographic key, and (ii) an encrypted tunnel configured to protect and prevent unauthorized access to the financial services system.”)
(See Foote, para. [0112]: “At step 468, the cryptographic keys used to encrypt user data are stored on an encrypted partition. The cryptographic keys can be digital asset private keys stored locally on the device and encrypted using BIP38. Private keys are not transmitted over the web.”)
In regards to claim 11,
11. A system for non-custodial digital asset management, the system comprising:
an ETP platform for managing digital assets;
(See Foote, para. [0062]: “The blockchain 113 can be based on blockchain technologies such as, for example, Ethereum, Open Chain, Chain Open Standard, etc. For a blockchain-based peer-to-peer payment network, a governing organization or consortium can control access to bank transfer services. Anyone can participate in the payment network, but in various embodiments, only users that registered with the managing organization(s) can transfer earned credits into currency via wire transfers to bank accounts. The blockchain 113 can autonomously manage workflows associated with payment processing as described in greater herein, reducing the processing load on the computer devices 102 within the system.”)
(See Foote, para. [0055]: “A pool account 110 can be included in the financial services system 100. The pool account 110 can be owned and operated by the service provider controlling the financial service system 100. The pool account 110 can include one account or more than one account capable of holding any suitable form of currency. The pool account 110 can hold currencies including cash (domestic and foreign), digital currencies (cryptocurrency, digital account balances, etc.), notes, bonds, stocks, real property, and any other types of assets. The pool account 110 works in cooperation with the digital wallet 106 to receive funds from the digital wallet 106. Additionally, the pool account 110 can issue currencies to users via the executable smart contracts 112.”)
(See Foote, para. [0076]: “A universal currency token 119 can be created by the financial services system 100 for use within the system. The universal currency token 119 can be used as a unit of an account that can be held in the user's digital wallet 106 until the funds are requested for withdrawal from the currency account 108 or the pool account 110. In some embodiments, the universal currency token 119 is only usable within the financial service system 100. In other words, in that embodiment, the universal currency token 119 is not publicly available or tradeable on an exchange. In various embodiments, the universal currency token 119 is available to the public.”)
The Examiner interprets that the “the universal currency token 119 is available to the public” is an exchange tradable product (ETP).
a database including a non-transitory computer-readable medium including code and a controller that executes the code, the controller enabling communication between a user device and the ETP platform,
(See Foote, para. [0004] The present invention is directed toward a financial services system that can utilize a user device and a blockchain having a blockchain ledger. In various embodiments, the financial services system includes a host database including a non-transitory computer-readable medium including code and a host controller that executes the code. The host controller can enable communication between a first digital wallet on the user device and one of a local currency account and a digital currency account to initiate a deposit via one of the currency accounts. The deposit can be assigned a transaction ID that is recorded to the blockchain ledger. The transaction ID can include a deposit currency value.”)
the database being connected to an encrypted tunnel that is configured to protect against unauthorized access to the system; and
(See Foote, para. [0041]: “Moreover, although the financial services system 100 is described herein as being implemented with TCP/IP communications protocols, the system can also be implemented using IPX, Appletalk, IP-6, NetBIOS, OSI, any tunneling protocol (e.g. IPsec, SSH), or any number of existing or future protocols. If the network is in the nature of a public network, such as the Internet, it can be advantageous to presume the network to be insecure and open to eavesdroppers.”)
a smart contract that is connected to the database via an application programming interface.
(See Foote, para. [0045]: “The user interface (not shown) within the application 104 can include a mobile graphical user interface (not shown) that accommodates multiple currencies (international, national, digital, crypto, etc.), countries, and languages. The application 104 can make use of a dynamic back-end query layer that can be optimized using insights derived from artificial intelligence to make requests of the various service providers and the third parties. The application 104 can include a point-of-sale user interface. Additionally, the application 104 can include multiple third-party application program interfaces (APIs) to perform various application tasks. The application 104 can include a blockchain interface (not shown) for interacting with the blockchain 113.”)
(See Foote, para. [0052]: “For example, the digital wallet 106 can be connected to a currency account 108. The digital wallet 106 can be configured to transfer funds to the pool account 110. The digital wallet 106 can interact directly with the blockchain 113 or via a blockchain interface. In various embodiments, the digital wallet 106 can serve as an interface to the user. In that regard, the digital wallet 106 can run on the user device 102 as a thin web client, a hybrid app, or a native one. The digital wallet 106 can use a Hierarchical Deterministic (HD) Wallet solution and can use BIP32, BIP39, and/or BIP44 to generate an HD tree of public addresses. The digital wallet 106 can also be configured to interact with the blockchain 113 either via a Blockchain client, such as GETH, or via API calls using the blockchain 113 as a service provider, such as Microsoft Azure® or Blockapps STRATO, for example. The host database 115 including the host controller 117 can communicate with the digital wallet 106 over the network.”)
(See Foote, para. [0059]: “The smart contracts 112 can vary depending on the design requirements of the financial services system 100, the user device 102, the application 104, the digital wallet 106, and/or the blockchain 113. It is understood that the smart contracts 112 can include additional systems, subsystems, components, and elements than those specifically shown and/or described herein. Additionally, or alternatively, the smart contracts 112 can omit one or more of the systems, subsystems, and elements that are specifically shown and/or described herein. As provided in greater detail herein, the smart contracts 112 communicates with the host database 115 to perform the functions identified herein.”)
(See Foote, para. [0161]: “Any of the communications, inputs, storage, databases or displays discussed herein can be facilitated through a website having web pages. The term “web page” as it is used herein is not meant to limit the type of documents and applications that might be used to interact with the user. For example, a typical website might include, in addition to standard HTML documents, various forms, JAVA® APPLE®, JAVASCRIPT, active server pages (ASP), common gateway interface scripts (CGI), extensible markup language (XML), dynamic HTML, cascading style sheets (CSS), AJAX (Asynchronous JAVASCRIPT and XML), helper applications, plug-ins, and the like. A server can include a web service that receives a request from a web server, the request including a URL and an IP address (123.56.192.234). The web server retrieves the appropriate web pages and sends the data or applications for the web pages to the IP address. Web services are applications that are capable of interacting with other applications over a communications means, such as the internet. Web services are typically based on standards or protocols such as XML, SOAP, AJAX, WSDL, and UDDI. Web services methods are well known in the art and are covered in many standard texts.”)
In regards to claim 12,
12. The system of claim 11 wherein the smart contract is configured to (i) enforce business workflows in a decentralized manner, (ii) keep track of exchange accounts, rebalancing, and asset transactions, and (iii) orchestrate transfers within the system.
(See Foote, para. [0057]: “The smart contracts 112 can be used with the financial services system 100. The financial services system 100 can enable digital currency smart contracts 112 that enforce business workflows in a decentralized manner and keep track of account balances. The financial services system 100 can enable reputation based smart contracts 112 that act as a directory of trustworthy entities as part of the network. The digital wallet 106 can enable payments by interacting with the smart contracts 112 and the blockchain 113 underpinning the payment network. The transfers made within the financial services system 100 can be orchestrated using the smart contracts 112. The smart contracts 112 can reside on the blockchain 113, but also can exist external to the blockchain 113.”)
In regards to claim 13,
13. The system of claim 11 further comprising a blockchain that is integrated with the ETP platform, the smart contract residing on the blockchain.
(See Foote, para. [0057]: “The smart contracts 112 can be used with the financial services system 100. The financial services system 100 can enable digital currency smart contracts 112 that enforce business workflows in a decentralized manner and keep track of account balances. The financial services system 100 can enable reputation based smart contracts 112 that act as a directory of trustworthy entities as part of the network. The digital wallet 106 can enable payments by interacting with the smart contracts 112 and the blockchain 113 underpinning the payment network. The transfers made within the financial services system 100 can be orchestrated using the smart contracts 112. The smart contracts 112 can reside on the blockchain 113, but also can exist external to the blockchain 113.”)
In regards to claim 14,
14. The system of claim 11 wherein the smart contract autonomously governs workflow of the system by supporting execution and recording of various actions including one of (i) account registration, (ii) asset rebalancing, and (iii) asset purchases.
(See Foote, para. [0036]: “Agents can receive access to sensitive data through a role-based access control permission system (RBAC) via an Agent Portal. The agent can receive funds and offer other cash remittance services to users, such as loans. In some instances, the agent will register a new user to the financial service system 100. After registering the new user, the agent can receive cash from the new user and deposit it into the user's newly created e-wallet using a point-of-sale interface. The agent can make transfers to recipients on behalf of the new user.”)
In regards to claim 15,
15. The system of claim 11 wherein the smart contract can be completed by a digital signature using crypto operations and a private key.
(See Foote, para. [0058]: “The digital currency smart contracts 112 can autonomously govern the workflow of the financial services system 100 by supporting execution and recording of various actions such as account registration, balance transfers, purchases, or other related actions. The digital currency smart contract 112 can control the end-to-end flow of the system. The digital currency smart contract 112 can be configured to maintain accounting for various user accounts by keeping a historic record of transactions and balances. The digital currency smart contract 112 can include a program written in a programming language such as, for example, Solidity, or any other suitable programming language. The smart contracts 112 can be completed by a digital signature using asymmetric crypto operations and a private key, for example.”)
(See Foote, para. [0100]: “At step 346, a cryptographic private key is generated and assigned to the transfer. The digital wallet can include an address and the private key associated with the digital wallet. The address and the private key can be generated by a user device and stored locally on the user device. The digital wallet can extract asymmetric private keys stored locally on the user device.”)
In regards to claim 16,
16. The system of claim 11 wherein the application programming interface includes an application programming interface gateway that is configured to aggregate real-time data.
(See Foote, para. [0098]: “At step 342, a user can send a cash deposit in U.S. dollars via the user's digital wallet by way of an instant settlement network. The system by utilizing the instant settlement network, can query the various integrated third-party rates in real-time and select the most cost-effective path based on an algorithm weighing additional factors such as delivery speed.”)
(See Foote, para. [0102]: “At step 350, the cash deposit in U.S. dollars is converted into another currency value via one or more application program interfaces (APIs). The system can include application programming interfaces (APIs) for converting currency value at certain exchange rates.”)
(See Foote, para. [0103]: “At step 352, the most efficient payment method is determined by one or one or more application program interfaces (APIs) calls against multiple payment providers and/or blockchains. The most efficient payment method can reduce settlement and delivery times to seconds rather than the days it takes for automated clearing house (ACH) transfers.”)
(See Foote, para. [0104]: “At step 354, the payment route is dynamically determined based on the proprietary weighted average of several metrics. The system queries the various third-party rates in real-time and determines the most cost-effective path based on an algorithm weighing additional factors such as delivery speed. The dynamic determination can also factor in different transfer channels such as a blockchain in addition to wire transfers or local transfer systems.”)
In regards to claim 17,
17. The system of claim 11 further comprising cloud storage that interconnects a user device and the database.
(See Foote, para. [0040]: “As used herein, the term “network” includes any cloud, cloud computing system, or electronic communications system or method that incorporates hardware and/or software components.”)
(See Foote, para. [0110]: “At step 464, the data used within the system is encrypted using cryptographic keys. All information can be encrypted using the advanced encryption standard (AES)-256. The data is secured and encrypted on a cloud architecture of the system. In some embodiments, the system includes secured, serverless cloud architecture with Google Firebase™ products and services. The products and services can be certified by evaluation and certification processes, including but not limited to: iso 27001, soc 1, soc 2, soc 3, iso 27017, and iso 27018. Data in transit can be encrypted using HTTPS.”)
(See Foote, para. [0156]: “’Cloud’ or ‘Cloud computing’ includes a model for enabling convenient, on-demand network access to a shared pool of configurable computing resources (e.g., networks, servers, storage, applications, and services) that can be rapidly provisioned and released with minimal management effort or service provider interaction. Cloud computing can include location-independent computing, whereby shared servers provide resources, software, and data to computers and other devices on demand.”)
In regards to claim 18,
18. The system of claim 11 further comprising a dashboard that is connected to the ETP platform, the dashboard being viewable by a user to view their investments and portfolio.
(See Foote, para. [0043]: “The application 104 can be displayed on the user device 102 via a graphical user interface (not shown). The application 104 can vary depending on the design requirements of the financial services system 100, the user device 102, and the host database 115. It is understood that application 104 can include additional systems, subsystems, components, and elements than those specifically shown and/or described herein. Additionally, or alternatively, application 104 can omit one or more of the systems, subsystems, and elements that are specifically shown and/or described herein. The host database 115 including the host controller 117 can control all of the functionality of the application 104. As provided in greater detail herein, the application 104 communicates with the host database 115 to perform the functions identified herein.”)
(See Foote, para. [0045]: “The user interface (not shown) within the application 104 can include a mobile graphical user interface (not shown) that accommodates multiple currencies (international, national, digital, crypto, etc.), countries, and languages. The application 104 can make use of a dynamic back-end query layer that can be optimized using insights derived from artificial intelligence to make requests of the various service providers and the third parties. The application 104 can include a point-of-sale user interface. Additionally, the application 104 can include multiple third-party application program interfaces (APIs) to perform various application tasks. The application 104 can include a blockchain interface (not shown) for interacting with the blockchain 113.”)
In regards to claim 19,
19. The system of claim 11 further comprising an exchange that allows for the transacting of digital assets within the ETP platform.
(See Foote, para. [0126]: “The system described herein can include an elastic payment and blockchain optimization engine. The system includes custom server-side processes that connecting various application program interfaces (APIs), blockchains, exchanges, and banking rails to process queries of connected financial networks. The system is configured to embed transactional financial data directly into blockchain token transactions. This technical solution removes the computation burden from local machines, increases levels of security/encryption, and distributes data and storage resources to the blockchain, thereby improving the performance of the user devices within the system.”)
In regards to claim 20, it is rejected on the same grounds as the combination of the rejections of claims 8, 11, 13, and 14.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US-2021/0209684-A1 to Foote at al. (“Foote”. Eff. Filed on Jan. 7, 2020. Published on Jul. 8, 2021) in view of US 20240346595 A1 to Fanizza et al. (“Fanizza”. Eff. Filed on Aug. 20, 2021. Published on Oct. 17, 2024).
In regards to claim 3, under a conservative interpretation of Foote, it could be argued that Foote does not explicitly teach the italicized portions below:
3. The system of claim 1 wherein the ETP platform provides real-time portfolio updates,
the portfolio updates allowing for continuous alignment with market conditions and investment strategies.
(See Fanizza, para. [0024]: “It is known that a strategy based on a diversified portfolio also requires a regular monitoring and rebalancing of the assets. Rebalancing is the process of realigning the weightings of a portfolio of assets. Rebalancing involves periodically buying or selling assets in a portfolio to maintain an original or desired level of asset allocation or risk. In other words, rebalancing is a process in which the portfolio composition is adjusted to keep the risk under control when pursuing a given investment strategy.”)
It would have been obvious to a person having ordinary skill in the art (PHOSITA), before the effective filing date of the claimed invention, to include in the system and method for transferring currency using blockchain, as taught by Foote, with the method and system of asset allocation, as further taught by Fanizza above, because both references are in the same art of managing exchange-traded products. See, for example, para. [0002] of Fanizza: “Methods and systems are known for managing a portfolio of an investment and, specifically, to maximize its return and minimize its risk. For instance, a portfolio is a collection of financial investments like stocks, bonds, commodities, cash, and cash equivalents, including closed-end funds and exchange traded funds (ETFs) which may provide a return or lead to a loss with corresponding risks. Stocks, bonds, and cash comprise the core of a portfolio. Though this is often the case, it does not need to be the rule. A portfolio may contain a wide range of assets including real estate, art and private investments.”
In regards to claim 6, under a conservative interpretation of Foote, it could be argued that Foote does not explicitly teach the italicized portions below:
6. The system of claim 1 wherein the ETP platform includes an active rebalancing algorithm that is configured to analyze (i) market data and (ii) portfolio weights, and to generate updated allocation instructions to maintain target asset distributions.
(See Fanizza, para. [0024]: “It is known that a strategy based on a diversified portfolio also requires a regular monitoring and rebalancing of the assets. Rebalancing is the process of realigning the weightings of a portfolio of assets. Rebalancing involves periodically buying or selling assets in a portfolio to maintain an original or desired level of asset allocation or risk. In other words, rebalancing is a process in which the portfolio composition is adjusted to keep the risk under control when pursuing a given investment strategy.”)
It would have been obvious to a person having ordinary skill in the art (PHOSITA), before the effective filing date of the claimed invention, to include in the system and method for transferring currency using blockchain, as taught by Foote, with the method and system of asset allocation, as further taught by Fanizza above, because both references are in the same art of managing exchange-traded products. See, for example, para. [0002] of Fanizza: “Methods and systems are known for managing a portfolio of an investment and, specifically, to maximize its return and minimize its risk. For instance, a portfolio is a collection of financial investments like stocks, bonds, commodities, cash, and cash equivalents, including closed-end funds and exchange traded funds (ETFs) which may provide a return or lead to a loss with corresponding risks. Stocks, bonds, and cash comprise the core of a portfolio. Though this is often the case, it does not need to be the rule. A portfolio may contain a wide range of assets including real estate, art and private investments.”
In regards to claim 10, under a conservative interpretation of Foote, it could be argued that Foote does not explicitly teach the italicized portions below:
10. The system of claim 1 wherein the ETP platform is configured to rebalance digital assets according to an investment strategy.
(See Fanizza, para. [0024]: “It is known that a strategy based on a diversified portfolio also requires a regular monitoring and rebalancing of the assets. Rebalancing is the process of realigning the weightings of a portfolio of assets. Rebalancing involves periodically buying or selling assets in a portfolio to maintain an original or desired level of asset allocation or risk. In other words, rebalancing is a process in which the portfolio composition is adjusted to keep the risk under control when pursuing a given investment strategy.”)
It would have been obvious to a person having ordinary skill in the art (PHOSITA), before the effective filing date of the claimed invention, to include in the system and method for transferring currency using blockchain, as taught by Foote, with the method and system of asset allocation, as further taught by Fanizza above, because both references are in the same art of managing exchange-traded products. See, for example, para. [0002] of Fanizza: “Methods and systems are known for managing a portfolio of an investment and, specifically, to maximize its return and minimize its risk. For instance, a portfolio is a collection of financial investments like stocks, bonds, commodities, cash, and cash equivalents, including closed-end funds and exchange traded funds (ETFs) which may provide a return or lead to a loss with corresponding risks. Stocks, bonds, and cash comprise the core of a portfolio. Though this is often the case, it does not need to be the rule. A portfolio may contain a wide range of assets including real estate, art and private investments.”
Conclusion
Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
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Any inquiry concerning this communication or earlier communications should be directed to Examiner Ayal Sharon, whose telephone number is (571) 272-5614, and fax number is (571) 273-1794. The Examiner can normally be reached from Monday to Friday between 9 AM and 6 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE Christine Behncke can be reached at (571) 272-8103 or at christine.behncke@uspto.gov. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sincerely,
/Ayal I. Sharon/
Examiner, Art Unit 3695
August 18, 2026
Prosecution Insights