DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements
This is a first office action on the merits in response to the application filed March 31, 2026.
Claims 1-20 are pending in the application.
Claims 1-20 are examined below.
Based on a comparison of the PGPub US 2026/0228724 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Priority
This application is a divisional application. See MPEP § 201.06. In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application(s) need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application(s) is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 5, 12, and 19 are objected to because of the following informalities: where applicant recites “indicating of,” it appears that applicant intends to recite “indicative of” or similar.
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.
Regarding claims 1-20, the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites receiving a signed message, retrieving data to verify the signed message, verifying the signed message, and approving a payment based at least in part on the verification, which constitutes a certain method of organizing human activity (specifically, a commercial interaction). Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (signcryption over a computer network). Because the abstract idea is not integrated into a practical application, claim 1 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 1 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
Independent claims 8 and 15 contain limitations similar to claim 1 and are therefore rejected using the same rationale.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 4, 6, 11, 13, and 18), add additional elements that simply further link to a particular technological environment (claims 2, 3, 5, 7, 9, 10, 12, 14, 16, 17, 19, and 20), and/or amount to additional extrasolution activity (claims 7, 14, and 20). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Claim Rejections - 35 U.S.C. 112(a) or 35 U.S.C. 112, 1st Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7, 14, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites: “generating, by the beneficiary computing system, a signcrypting verification event journal entry comprising information related to at least one of the digitally signed cross-border message, the public key of the intermediate computing system, a public/private key pair of the beneficiary computing system, or a result of the unsigncryption.” Regarding this limitation, applicant’s disclosure discusses only: “the distributed repository 510 stores an event entry generated by a financial institution in the end-to-end cross-border payment authentication system 10. The event journal entry can capture a verification process result of a digital signature, the generation or encapsulation of a cross-border payment message, or other information. In some arrangements, the distributed repository 510 is a private blockchain.” Because applicant is silent regarding recording “a result of the unsigncryption” or any encryption keys, one of ordinary skill in the art would not understand how the inventor intended the function of generating the journal entry to be performed, and the specification fails to describe the claimed invention in sufficient detail such that one skilled in the art would reasonably conclude that the inventor had possession of the claimed invention at the time of filing. See MPEP 2161.01.
Claims 14 and 20 contain language similar to claim 7 as discussed in the immediately preceding paragraph, and for reasons similar to those discussed above, claims 14 and 20 are also rejected as failing to comply with the written description requirement.
Claim Rejections - 35 USC § 103
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 statute.
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 of this title, 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 following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over "Information technology — Security techniques — Signcryption" ISO/IEC 29150 (reference A35 on the IDS submitted August 21, 2026, hereafter “ISO/IEC 29150”) in view of Yacobi (US 5,872,844 A).
ISO/IEC 29150 discloses as follows:
Claim
Limitation
ISO/IEC 29150
1,8,15
receiving, by a beneficiary computing system from an intermediate computing system, a digitally signed cross-border message, wherein the digitally signed cross-border message is signed using at least one of a signedData cryptographic message syntax, detached signedData cryptographic message syntax, or signcryptedData cryptographic message syntax
"ciphertext X," section 9.6
1,8,15
retrieving, by the beneficiary computing system, a public key of the intermediate computing system or an originating computing system
"a recipient's public and private key pair …, a sender's public key," section 9.6
1,8,15
verifying at least one of the digitally signed cross-border message or the intermediate computing system comprising determining, by the beneficiary computing system, at least one of
"unsigncryption algorithm," section 8
1,8,15
whether a digital signature and a hash of the digitally signed cross-border message is verified recursively
1,8,15
whether a digital signature and a detached content of the digitally signed cross-border message is verified recursively
1,8,15
or whether unsigncryption [and path validation] of the intermediate computing system is successful
2,9,16
wherein determining whether unsigncryption and path validation of the intermediate computing system is successful comprises unsigncrypting, by the beneficiary computing system, the digitally signed cross-border message using the public key of the intermediate computing system and a public/private key pair of the beneficiary computing system
An unsigncryption algorithm SC Unsigncrypt performs a sequence of operations on an input and outputs either (ACCEPT, a plaintext) or (REJECT, NULL). The input shall consist of 1) a ciphertext, 2) a recipient's public and private key pair, 3) a sender's public key, 4) a label and 5) an option.ACCEPT and REJECT in the output are symbolic values that indicate the acceptance and rejection of validity of the ciphertext in the input, respectively, and NULL is the null string
3,10,17
wherein the beneficiary computing system unsigncrypts the digitally signed cross-border message using an unsigncryption algorithm, and wherein inputs of the unsigncryption algorithm comprises digitally signed cross-border message, the public key of the intermediate computing system, and the public/private key pair of the beneficiary computing system
4,11,18
in response to determining that the unsigncryption is invalid, rejecting, by the beneficiary computing system, the digitally signed cross-border message
5,12,19
in response to determining that the unsigncryption is invalid, outputting, by the beneficiary computing system, a symbolic value indicating of the digitally signed cross-border message being rejected and a null string indicative of the unsigncryption being unsuccessful.
6,13
in response to determining that the unsigncryption is valid, the digitally signed cross-border message is accepted
7,14,20
generating, by the beneficiary computing system, a signcrypting verification event journal entry comprising information related to at least one of the digitally signed cross-border message, the public key of the intermediate computing system, a public/private key pair of the beneficiary computing system, or a result of the unsigncryption
ISO/IEC 29150 fails to explicitly disclose but Yacobi teaches:
Claim
Limitation
Yacobi (US 5,872,844 A) discloses
1,8,15
determining … whether … path validation of the intermediate computing system is successful
"The payee electronic wallet verifies the signatures of the issuer and each payer in the transferability chain to ensure that they are valid (i.e., certificates not expired or revoked), and that the assets themselves have not expired. If all is positive, the payee accepts the assets as a valid payment and the assets are transferred from the payer's wallet"
1,8,15
approving, by the beneficiary computing system, a cross-border payment based at least in part on verifying the at least one of the digitally signed cross-border message or the intermediate computing system
7,14,20
generating, by the beneficiary computing system, a signcrypting verification event journal entry comprising information related to at least one of the digitally signed cross-border message, the public key of the intermediate computing system, a public/private key pair of the beneficiary computing system, or a result of the unsigncryption
"historical registry of signatures of all the wallets that have handled and transferred the electronic asset"
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify ISO/IEC 29150 to include the path validation, transaction approval, and record keeping of Yacobi in order to achieve the predictable result of creating a useful payment system.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,154,106 in view of Yacobi (US 5,872,844 A). Although the conflicting claims are not identical, they are not patentably distinct from each other because they differ merely in terminology, nonfunctional descriptive material, intended use, etc. Those limitations not explicitly disclosed in the claims of U.S. Patent No. 12,154,106 would be obvious in view of the transaction approval taught by Yacobi as detailed above.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rosati (US 2012/0239777 A1) discloses a payment scheme that can include signcryption.
Zheng (US 6,396,928 B1) discloses signcryption.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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