DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 12/16/2025.
Claims 1-20 are pending.
Claims 1-20 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 .
Information Disclosure Statement
An applicant's duty of disclosure of material information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573,220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to "bury" it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc. 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea LarkBoats, Inc. et al.,175 U.S.P.Q. 260, 272 (S.D. FI. 1972). It is unreasonable for Examiner to review all of the cited references thoroughly. By initialing the accompanying 1449 forms, examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12530664 (“Patent Document”). Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the Patent Document recites all the limitations of claim 1 of the instant application; however, claim 1 of the Patent Document differs since it further recites additional claim limitations.
Instant Application
Patent Document
A method performed by at least one processor, comprising:
storing a plurality of private and public key pairs in a pooled account key storage associated with a total amount of Math Based Currency (MBC), wherein the pooled account key storage is inaccessible to external computing systems, wherein a plurality of MBC accounts of a plurality of customers is stored on an overlay ledger, each MBC account of the plurality of MBC accounts comprising an MBC balance that is not associated with the plurality of private and public key pairs stored in the pooled account key storage;
A method of interest allocation to math based currency (MBC) at a financial institution, the method comprising:
storing, by an MBC transaction processor of a plurality of processors, a plurality of private and public key pairs in a pooled account key storage associated with a total amount of MBC, wherein the pooled account key storage is inaccessible to computing systems external to the financial institution;
tracking, by an account balance processor of the plurality of processors, a plurality of MBC accounts of a plurality of customers stored on an overlay ledger, each MBC account of the plurality of MBC accounts comprising an MBC balance that is not associated with the plurality of private and public key pairs stored in the pooled account key storage;
calculating, by the account balance processor, an amount of interest earned on an amount of MBC of an MBC account of the plurality of MBC accounts associated with a customer of the plurality of customers, wherein the amount of interest earned is based on an exchange rate of a type of MBC associated with a pooled account key storage private key to a fiat currency;
updating a first entry of the overlay ledger that lists the MBC account of the customer by an amount of interest earned, wherein the overlay ledger tracks amounts of MBC associated with each of the plurality of MBC accounts of the plurality of customers, wherein the amounts of MBC associated with each of the plurality of MBC accounts stored in the overlay ledger is decoupled from the total amount of MBC deposits and MBC credits stored in the pooled account key storage;
updating, by the account balance processor, a first entry of the overlay ledger that lists the MBC account of the customer by the amount of interest earned, wherein the overlay ledger tracks amounts of MBC associated with each of the plurality of MBC accounts of the plurality of customers, wherein the overlay ledger is accessible to computing systems external to the financial institution;
determining, by the MBC transaction processor, a ratio of the total amount of MBC in the pooled account key storage and an aggregate value of a plurality of MBC balances reflected in the overlay ledger falls below a threshold level;
responsive at least in part to determining the ratio falls below the threshold level, executing, by the MBC transaction processor, an exchange to collect an additional amount of MBC to increase to the total amount of MBC of the financial institution such that the total amount of MBC in the pooled account key storage is above the threshold level, wherein the pooled account key storage stores the plurality of private and public key pairs corresponding with the total amount of MBC of the financial institution;
transferring, by the MBC transaction processor, the additional amount of MBC into the pooled account key storage;
wherein the amounts of MBC associated with each of the plurality of MBC accounts stored in the overlay ledger are decoupled from the total amount of MBC deposits and MBC credits of the financial institution stored in the pooled account key storage;
wherein the overlay ledger comprises a plurality of MBC entries corresponding with a balance of MBC, wherein the balance of MBC corresponding with each of the plurality of MBC entries is not associated with a corresponding key pair of the plurality of private and public key pairs of the pooled account key storage, each of the plurality of MBC accounts is a single MBC entry of the plurality of MBC entries in the overlay ledger; and
wherein the overlay ledger comprises a plurality of MBC entries corresponding with a balance of MBC, wherein the balance of MBC corresponding with each of the plurality of MBC entries is not associated with a corresponding key pair of the plurality of private and public key pairs of the pooled account key storage, each of the plurality of MBC accounts is a single MBC entry of the plurality of MBC entries in the overlay ledger; and
wherein the decoupling from the total amount of MBC deposits corresponds to the amounts of MBC with each of the plurality of MBC accounts stored in the overlay ledger being unequal to the total amount of MBC deposits and MBC credits of a financial institution stored in the pooled account key storage.
wherein the decoupling from the total amount of MBC deposits corresponds to the amounts of MBC with each of the plurality of MBC accounts stored in the overlay ledger being unequal to the total amount of MBC deposits and MBC credits of the financial institution stored in the pooled account key storage.
Claim 1 of the patent document contains the additional elements of “tracking, by an account balance processor of the plurality of processors, a plurality of MBC accounts of a plurality of customers stored on an overlay ledger, each MBC account of the plurality of MBC accounts comprising an MBC balance that is not associated with the plurality of private and public key pairs stored in the pooled account key storage; calculating, by the account balance processor, an amount of interest earned on an amount of MBC of an MBC account of the plurality of MBC accounts associated with a customer of the plurality of customers, wherein the amount of interest earned is based on an exchange rate of a type of MBC associated with a pooled account key storage private key to a fiat currency;… determining, by the MBC transaction processor, a ratio of the total amount of MBC in the pooled account key storage and an aggregate value of a plurality of MBC balances reflected in the overlay ledger falls below a threshold level; responsive at least in part to determining the ratio falls below the threshold level, executing, by the MBC transaction processor, an exchange to collect an additional amount of MBC to increase to the total amount of MBC of the financial institution such that the total amount of MBC in the pooled account key storage is above the threshold level, wherein the pooled account key storage stores the plurality of private and public key pairs corresponding with the total amount of MBC of the financial institution; transferring, by the MBC transaction processor, the additional amount of MBC into the pooled account key storage; wherein the amounts of MBC associated with each of the plurality of MBC accounts stored in the overlay ledger are decoupled from the total amount of MBC deposits and MBC credits of the financial institution stored in the pooled account key storage.”
The claims in the instant application are anticipated by the Patent Document. The claims are directed to the same subject matter, perform the same method steps and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other inventions. The instant application claims are generic to the limitations in the Patent Document. Each limitation in the instant application is fully encompassed in the Patent Document claims.
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 an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method, and claims 9 and 17 are directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “storing …key pairs… updating…ledger….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, storing account information and updating a record. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application. The use of a distributed ledger or blockchain does not preclude the claim from reciting an abstract idea as the blockchain recites functions of a generic computer component, such as storing records.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “storing …key pairs… updating…ledger…” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2, 3, 6, 10, 11, 14 and 18 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 4, 5, 7, 8, 12, 13, 15, 16, 19 and 20 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-8, 10-16 and 18-20 are also rejected.
Claim Rejections - 35 USC § 103
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Winklevoss et al. (US 9892460) (“Winklevoss”), and further in view of Olsen et al. (US 20020156718) (“Olsen”).
Regarding claims 1, 9 and 17, Winklevoss discloses storing a plurality of private and public key pairs in a pooled account key storage associated with a total amount of Math Based Currency (MBC), wherein the pooled account key storage is inaccessible to external computing systems, wherein a plurality of MBC accounts of a plurality of customers is stored on an overlay ledger, each MBC account of the plurality of MBC accounts comprising an MBC balance that is not associated with the plurality of private and public key pairs stored in the pooled account key storage (Abstract; column 6, line 45-65, column 36, line 3-65, column 49, line 59-66);
wherein the overlay ledger comprises a plurality of MBC entries corresponding with a balance of MBC, wherein the balance of MBC corresponding with each of the plurality of MBC entries is not associated with a corresponding key pair of the plurality of private and public key pairs of the pooled account key storage, each of the plurality of MBC accounts is a single MBC entry of the plurality of MBC entries in the overlay ledger; and wherein the decoupling from the total amount of MBC deposits corresponds to the amounts of MBC with each of the plurality of MBC accounts stored in the overlay ledger being unequal to the total amount of MBC deposits and MBC credits of a financial institution stored in the pooled account key storage (Figure 15, 17, 23; column 12, line 57-66, column 19, line 62-67, column 21, line 38-66, column 43, line 6-36, column 49, line 48-67, column 51, line 18-67, column 52, line 1-49, column 64, line 20-67, column 65, line 1-67, column 66, line 1-67, column 68, line 37-67, column 69, line 1-67, column 70, line 1-67, column 72, line 4-67, column 73, line 42-67).
Winklevoss does not disclose updating a first entry of the overlay ledger that lists the MBC account of the customer by an amount of interest earned, wherein the overlay ledger tracks amounts of MBC associated with each of the plurality of MBC accounts of the plurality of customers, wherein the amounts of MBC associated with each of the plurality of MBC accounts stored in the overlay ledger is decoupled from the total amount of MBC deposits and MBC credits stored in the pooled account key storage.
Olsen teaches updating a first entry of the overlay ledger that lists the MBC account of the customer by an amount of interest earned, wherein the overlay ledger tracks amounts of MBC associated with each of the plurality of MBC accounts of the plurality of customers, wherein the amounts of MBC associated with each of the plurality of MBC accounts stored in the overlay ledger is decoupled from the total amount of MBC deposits and MBC credits stored in the pooled account key storage (Figure 5, 6, 10; ¶ 7, 44-46, 76, 77, 129, 134, 147-151, 158, 160, 170, 175-184; claim 3);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Winklevoss and Olsen in order to provide further protection for currency trading (Olsen; ¶ 2-4, 58, 59).
Regarding claims 2, 10 and 18, Winklevoss discloses wherein access to the overlay ledger is permitted to the external computing systems, and access to the pooled account key storage is prevented to the external computing systems (Figure 15; column 22, line 26-35, column 42, line 57-67, column 44, line 37- 55, column 51, line 16-67, column 52, line 1-67, column 59, line 8-31, column 60, line 1-31).
Regarding claims 3, 11 and 18, Winklevoss discloses wherein there is no one-to-one correlation between the total amount of MBC of the plurality of private and public key pairs in the pooled account key storage and the plurality of MBC entries in the overlay ledger (column 6, line 45-65, column 23, line 25-46, column 24, line 33-49, column 25, line 30-62, column 36, line 3-65, column 49, line 59-66).
Regarding claims 4, 12 and 19, Winklevoss discloses reconciling the pooled account key storage comprising verifying at least one of a balance of one or more loans or the amount of MBC of the MBC account of the customer (Figure 12C, 16; column 21, line 38-45, column 41, line 40-58, column 50, line 5-56).
Regarding claims 5, 13 and 20, Winklevoss discloses reconciling the overlay ledger comprising verifying at least one of the plurality of MBC entries, a balance of one or more loans, the amount of MBC of the MBC account (Figure 12C, 16; column 21, line 38-45, column 50, line 5-56).
Regarding claims 6 and 14, Olsen teaches wherein the amount of interest earned is based on at least one of a number of accounts associated with the customer, a loan interest rate, or the amount of MBC of the MBC account (Figure 10; ¶ 44-46, 71, 79, 129, 134, 153, 175-184).
Regarding claims 7 and 15, Winklevoss discloses receiving a deposit request comprising a customer private key for a transaction amount of MBC, wherein the deposit request is received from one of an automated teller machine (ATM), an MBC wallet application, or a website of the financial institution; creating a first private and public key pair; and associating the transaction amount of MBC with an account of the customer of the overlay ledger, the account of the customer corresponding to the created first private and public key pair (Figure 19C; column 6, line 45-65, column 16, line 61-67, column 17, line 3-67, column 18, line 1-59, column 19, line 21-67, column 20, line 4-26, column 32, line 39-57, column 36, line 3-65, column 49, line 59-66, column 54, line 1-21, column 55, line 1-23, column 57, line 3-27, column 61, line 6-12).
Regarding claims 8 and 16, Winklevoss discloses updating the overlay ledger by the transaction amount of MBC; and in response to transferring the transaction amount of MBC, storing the first private and public key pair in the pooled account key storage (column 14, line 23-38, column 38, line 42-67, column 39, line 1-67, column 40, line 1-67, column 52, line 15-33).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sene (US 2013/0029759) teaches betting deposit pools with currency conversions and winnings deposited into accounts.
Gross (US 2015/0164192) teaches crypto deposits coupled with key generation
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