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`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 1 of 59 PagelD #: 922
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`EXHIBIT 4
`EXHIBIT 4
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`

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`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 2 of 59 PageID #: 923
`Case 1:22-cv-Q1253-MN Document 15-4 Filed.11/29/22 Page 2 of 59 PagelD #: 923
`NITED STATES
`PATENT AND [TRADEMARK
`OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`15/309,612
`
`11/08/2016
`
`Reginald Middleton
`
`4675.1002BS
`
`2321
`
`BRUNDIDGE & STANGER,P.C.
`1925 BALLENGER AVENUE,STE. 560
`ALEXANDRIA, VA 22314
`
`NIGH,JAMES D
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`ART UNIT
`
`3685
`
`MAIL DATE
`
`01/27/2021
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 3 of 59 PageID #: 924
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`ase Page3of1:22-cv-0 -MN Documen -4 iled 9 59 PagelD #: 924
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`Application No.
`Applicant(s)
`15/309 612
`Middleton etal.
`
`
`
`Examiner
`JAMES D NIGH
`
`Art Unit
`3685
`
`AIA (FITF) Status
`Yes
`
` Office Action Summary
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on December 8, 2020.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1,3-6,9,12,15-17,20 23-24 26, 28-29 and 31-32 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`) © Claim(s)___is/are allowed.
`)
`Claim(s) 1,3-6,9,12,15-17,20,23-24 2628-29 and 31-32 is/are rejected.
`) O Claim(s)___is/are objected to.
`C) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210120
`
`

`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Status
`
`2.
`
`As of the Office Action dated June 8, 2020 claims 1, 3-6, 9, 12, 15-17, 20, 23-24,
`
`26, 28-29 and 31 were pending and claims 1, 3-6, 9, 12, 15-17, 20, 23-24, 26, 28-29
`
`and 31 stood rejected. Claims 1, 3-6, 9, 12, 15-17, 20, 23-24, 26, 28-29 and 31 have
`
`been amended. Claim 32 has been added. No claims have been cancelled. Claims 1,
`
`3-6, 9, 12, 15-17, 20, 23-24, 26, 28-29 and 31-32 are therefore currently pending and
`
`are presented for examination on the merits.
`
`Responseto Arguments
`
`3.
`
`Applicant’s argumentwith regard to the 35 U.S.C. § 101 rejection of claims 1, 3-
`
`6, 9, 12, 15-17, 20, 23-24, 26, 28, 29 and 31-32 has been fully considered but is not
`
`persuasive. Applicant argues that claim 24 (which Applicant has indicated is also
`
`representing claims 1 and 12) does notfall within one of the groupings of abstract ideas
`
`identified by the 2019 PEG (argument beginning on page 22 of remarks concluding on
`
`page 26). Applicant states that claim 24 is “...directed to a specific method for enabling
`
`increased security for either party entering into the transaction via the decentralized
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`digital currency of the transfer mechanism, without requiring expensive tamper-proof
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`electronic units” (remarks at page 25). Applicant did not point to any portion of the
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`written disclosure that would indicate that the inventors viewedtheir invention as solving
`
`a security problem however even if the written record actually reflected that the
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 3
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`invention was directed towards some form of security enhancement the argument itself
`
`only suggests that some form of increased business security was desired and that no
`
`technological solution is being employed to achieve the security. Applicant also offers
`
`an argument that decentralization somehowtakes the claim out of the realm of a
`
`fundamental economic practice. The problem with this argument is that decentralization
`
`is also an abstract concept and simply adding layers of abstraction to an abstract idea
`
`does not makethe claim any less abstract. Therefore Applicant has failed to show any
`
`clear error on the part of the examiner in holding that the claim is ineligible under Prong
`
`One of Step 2A.
`
`4.
`
`Applicant then argues that a practical application is present under Prong Twoof
`
`Step 2A (remarks at pages 26-34). Applicant attempts to comparethe claimed
`
`invention to examples from the 2019 PEGin order to establish that a practical
`
`application of the abstract idea is present in the claim. Applicant alleges that the claim
`
`is similar to Example 40 from the 2019 PEGinvolving network monitoring and states
`
`that the operation of “effecting of the complete disbursement transaction to when an
`
`action by at least two of the networkparticipants is detected based on the observed
`
`external state” (remarks at page 28). The problem with this argument is that the
`
`observedstate, per the written disclosure at paragraph 31 is that the external state is
`
`exemplified by the language “... the relative value of certain financial instruments at a
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`specific time” which clearly is a form of business event and not a technological event
`
`such as the one in the claim from example 40. Similarly Applicant’s remark that the
`
`claimed invention “avoids involvement of expensive third party intermediaries” also has
`
`to be viewed if anything as a business improvement but certainly is not a technological
`
`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 4
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`improvement that would form a practical application under Prong Two of Step 2A as
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`monitoring the value of financial instruments is another abstract idea. Similarly with
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`regard to Applicant’s allegation that the claim is similar to Example 41 from the 2019
`
`PEGit is noted that Applicant states in remarks that “...Claim 24 is directed to an
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`improvements (sic) in processing transaction technology, particularly, via a transfer
`
`mechanism comprising a decentralized digital currency with enhanced security”. Again
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`the “enhanced security” feature Applicant is relying upon in argument is not discussed in
`
`the written disclosure however it is also noted that enhanced security in a business or
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`economic transaction is an abstract idea itself and cannot be viewed under Prong Two
`
`of Step 2A asthe basis for forming a practical application under the 2019 PEG.
`
`Similarly having a transaction “validated by a number of participants” (remarks at pages
`
`29-30) is also an abstract idea that cannot serve asthe basis for a practical application
`
`under the 2019 PEG. With regard to Applicant’s remarks regarding a “transfer
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`mechanism comprising a decentralized digital currency” (remarks at pages 31-34) are
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`directed not towards any technological improvements but merely those that involve
`
`business arrangements and again a decentralized currency is another abstract idea. A
`
`decentralized currency is not something that is unique to the internet world as barter
`
`economies could be described as decentralized and grains and precious metals which
`
`have long been used in economic exchange have no central issuing authority.
`
`Applicant's argument discusses a swaptransaction involving cryptocurrency but
`
`produces no reasoning as to why suchatransaction incorporates any technological
`
`improvement to the functioning of an underlying computer. The arguments are
`
`employing any of the rationales from the 2019 PEG for determining whether a practical
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 5
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`application is present and merely provide a conclusory argument that a practical
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`application is present. However as no showing of clear error on the part of the
`
`Examiner has been made this argument is unpersuasive.
`
`5.
`
`Applicant's further argument (pages 34-37 of remarks) with regard to the present
`
`rejection under section 101 that the claims amount to significantly more than the
`
`abstract idea under Step 2B has been fully considered but is not persuasive. The
`
`arguments are substantially similar to those presented regarding Prong Twoof Step 2A
`
`and Examiner does not see where Applicant has actually pointed to any technological
`
`improvement that is taking place but instead is pointing to an improvement thatis
`
`related to conducting business using the claimed invention. However an improvement
`
`that is directed entirely towards a business objective must be viewed as being part of
`
`the abstract idea itself and does not serve under Step 2B to form something that can be
`
`viewed as contributing significantly more to the claim then the abstractidea itself.
`
`Therefore this argument is also unpersuasive.
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`6.
`
`Applicant's argumentwith regard to the 35 U.S.C. § 112 (b) rejection of claims 1,
`
`3-6 and 9 has been fully considered and is persuasive. Accordingly the rejection will be
`
`withdrawn.
`
`7.
`
`Applicant’s argumentwith regard to the 35 U.S.C. § 103 rejection of claims 1, 3-
`
`6, 9, 12, 15-17, 20, 23-24, 26, 28, 29 and 31-32 as being unpatentable over Rosen
`
`(U.S. Patent Publication 2003/0070080)in view of Feigelson (U.S. Patent Publication
`
`2013/0166455) has been fully considered but is mootin view of the new grounds of
`
`rejection. However Examiner would reiterate that as the claim is directed towards a role
`
`of an intermediary that there is nothing in the claim that would alter the function of the
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 6
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`intermediary based on whether a centralized or decentralized currency were being used
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`and Applicant has presented nothing more than a conclusory argument. Furthermore
`
`there is nothing within the Rosen reference that disparages the use of a decentralized
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`currency and in order to “teach away” from the claimed invention the reference would
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`have to make a statement to the effect that precludes or disparages the use of
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`cryptocurrency (/n re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir.
`
`2004), MPEP § 2123, 2141.02 (VI)). Without such a statement present in the Rosen
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`referenceitself the allegation that Rosen “teaches away” from the use of decentralized
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`currency must be held as unpersuasive.
`
`Claim Rejections - 35 USC § 101
`
`8.
`
`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 thistitle.
`
`9.
`
`Claims1, 3-6, 9, 12, 15-17, 20, 23-24, 26, 28, 29 and 31-32 are rejected under
`
`35 U.S.C. 101 because the claimed invention is directed to an abstract idea
`
`without significantly more.
`
`10.
`
`Claim 1 recites a device and therefore meets Step 1 of the 2019 Revised Patent
`
`Subject Matter Eligibility Guidance as it can be viewed as a machine whichfalls within
`
`one of the four categories of statutory subject matter. Claim 1 recites as follows:
`
`1. (Currently Amended) A computing device for processing a transaction
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`between a first client device and a second client device via a transfer mechanism, the
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`transfer mechanism comprising a decentralized digital currency, the computing device
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`comprising:
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`

`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 7
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`a memoryfor storing a first asymmetric key pair, the first asymmetric key pair
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`comprising a first private key and a first public key;
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`a networkinterface for receiving terms, the terms comprising:
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`at least one of a first principal data or a second principal data;
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`a reference to at least one of a first data source or a second data source; and
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`an expiration timestamp;
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`a computer processor coupled to the memory and the networkinterface, the first
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`computer processor configured to:
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`read the first private key from the memory;
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`computeafirst cryptographic signature from the first private key;
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`create an inchoate data record comprising:
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`a commit input for receiving a commit data from a commit transaction;
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`one or more output data obtained from at least one ofthe first principal data or
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`the second principal data, and a value data from at least one ofthe first data source or
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`the second data source; and
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`the first cryptographic signature; and
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`publish the inchoate data record to at least one ofthe first client device and the
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`second client device;
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`wherein the inchoate data record is used byat least one ofthe first client device
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`or the second client device to create a complete data record and to create a transaction
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`by submitting the complete data record to the transfer mechanism,
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`wherein the transfer mechanism comprises the decentralized digital currency that
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`is accessible via a computer network by the computing device, the first client device,
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 8
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`and the second client device, respectively, and the complete data record is broadcast,
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`via the transfer mechanism to the computing device, the first client device, and the
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`second client device for verifying and effecting the transaction,
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`wherein an external state is observed by each of the computing device, the first
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`client device, and the second client device and the transaction is effected when an
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`action by at least two of the computing device, the first client device, or the second
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`client device is detected based on the observed external state.
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`The claim is analyzed under prong one, step 2A in order to determine if the claim
`
`is directed towards a judicial exception. The claim recites in the preamble thatit is
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`processing a transaction between a first client device and a second client device using a
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`transfer mechanism comprising a decentralized digital currency. Asymmetric key pairs
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`are used and terms are received comprisingafirst or second principal data, a reference
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`to one of two data sources and an expiration time stamp. Data is obtained from at least
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`one of two principal data and value data from at least one of two data sources. A
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`private key is retrieved and is used to compute a cryptographic signature. A data record
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`is then formed by receiving commit data, one or more output data and the computed
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`cryptographic signature and the record is then published to at least one of a first and
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`second client device. The claim falls within two groupings of abstract ideas involving
`
`the organizing of humanactivity as indicated in the 2019 Revised Patent Subject Matter
`
`Eligibility Guidance, one of which is the processing of a payment between two parties
`
`which falls under the category of a fundamental economic practice. As the claim also
`
`recites that the transaction requires particular signatures of the intermediary and the first
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`or second client device the claim can also be viewedasfalling within the category of a
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 9
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`commercial/legal interaction involving a contract involving terms including principal data,
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`references to data sources and expiration of the terms i.e. requiring that the contract be
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`consummated within a specified period of time that result in the creation of a
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`disbursementtransaction record including amounts, values, signatures and commitment
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`inputs that are then published to both parties to the contract. With regard to the
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`observing of an external state and the affecting of the transaction based on the
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`observedstate this can also be viewed as a mental processthat is capable of being
`
`performed by a humanbeing via observation and evaluation. The disclosureitself
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`recites at paragraph 108 that “The invention pertains to agreements among distinct
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`parties that contemplate transfer oftitle to property, as well as any industry wherethat
`
`may be of value or importance” and clearly falls within the grouping of commercial/legal
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`interactions under the groupings. The encryption is being claimed at a generally high
`
`level and only serves to add a mathematical relationship to the claim asit is directed
`
`towards another one of the groupings in the 2019 PEG. Many of the operations can
`
`also be performed by human beings using pen and paper such as obtaining terms,
`
`creating records and performing transactions. Therefore under the analysis made under
`
`prong one of step 2A the claim is determinedto beineligible.
`
`The analysis then proceedsto prong two of step 2A where an analysis is
`
`performed in order to determine whether the claim recites additional elements that
`
`integrate the abstract idea into a practical application of the abstract idea.
`
`Integrating
`
`the claim into a practical application requires an additional element or a combination of
`
`additional elements in the claim to apply, rely on, or use the judicial exception in a
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`manner that imposes a meaningful limit on the judicial exception, such that the claim is
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 10
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`more than a drafting effort designed to monopolize the exception. The structural
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`elementsin the claim include the memoryof the claimed device, a networkinterface
`
`and a processor. The claim also recites that the device possesses the capability of
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`encryption by taking a private key and computing a cryptographic signature.
`
`In
`
`reviewing the written disclosure at paragraphs 52-53, 106 and 113 the processor,
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`memory and networkinterface are described in a manner that includes no technological
`
`improvement to the functioning of the processor and only describes a particular
`
`technological environment for which an intermediary described in paragraph 113 asa
`
`“facilitator” is linked. With regard to the encryption capabilities no particular algorithm
`
`for computing a signature is described in the written disclosure beyond the recitations at
`
`pages 17, 18 and 28 that in order to consummate a transaction that a plurality of
`
`signatures are required and the function is described at a generally high level by the
`
`written disclosure such that in the broadest reasonable interpretation the claim scope
`
`encompasses encryption that could be performed by human beings. Even if a computer
`
`calculation of the signature wereinferred from the claim the written disclosure relies on
`
`prior art signature calculation mechanisms such as multisignature transactions (see
`
`footnote 2 of page 4 of the written disclosure) or P2SH (97 and 104 of the written
`
`disclosure) and therefore do not constitute any technological improvement to the
`
`functioning of the computer itself. While the claim scopeis limited in scope to the
`
`computing device acting as a facilitator or intermediary Examiner will also consider the
`
`participation of the two client devices. The first and second client devices are simply
`
`serving as proxies for human participants and are being recited at a generally high level.
`
`As pointed out paragraphs 52-53 and 106 of the written disclosure are directed towards
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`

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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 11
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`a generic computing environment that include no technological improvement to the
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`functioning of any particular computer and paragraph 110 in describing the client also
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`describes a generic computing device with no technological improvement.
`
`If the
`
`combination of facilitator and two clients are considered there is no meaningful
`
`technological contribution being made asthe facilitator and clients merely represent the
`
`computer equivalents of two parties to a contract in which an intermediary is used and
`
`therefore the combination as a whole is merely a mechanism for linking the abstract
`
`idea to a particular technological environment. Therefore under prong two of Step 2A
`
`no practical application of the abstract idea is present in the claim and the result of the
`
`analysis is that the claim is still ineligible.
`
`Dependent claims 3-6 and 9 recite the same elements as claim 1 inclusive of
`
`different data but utilize the same structural components and signature computation
`
`present in claim 1. Therefore under both prongs one andtwo of Step 2A these
`
`limitations only serve to add additional layers of abstraction to the abstract idea of claim
`
`1 and therefore under prongs one and twoof step 2A are also found to beineligible.
`
`The analysis proceedsto step 2B of the 2019 Revised Patent Subject Matter
`
`Eligibility Guidance. The claim recites structural elements in the claim including the
`
`memoryof the claimed device, a network interface and a processor. The claim also
`
`recites that the device possesses the capability of encryption by taking a private key
`
`and computing a cryptographic signature.
`
`In reviewing the written disclosure at
`
`paragraphs 52-53, 106 and 113 the processor, memory and networkinterface are
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`described in a manner that includes no technological improvement to the functioning of
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`the processor and only describes a particular technological environmentfor which an
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`

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`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 14 of 59 PageID #: 935
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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 12
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`intermediary described in paragraph 113 as a “facilitator” is linked. With regard to the
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`encryption capabilities no particular algorithm for computing a signature is described in
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`the written disclosure beyond the recitations at pages 17, 18 and 28 that in order to
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`consummate a transaction that a plurality of signatures are required and the function is
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`described at a generally high level by the written disclosure such that in the broadest
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`reasonable interpretation the claim scope encompasses encryption that could be
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`performed by human beings. Even if a computer calculation of the signature were
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`inferred from the claim the written disclosure relies on prior art signature calculation
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`mechanisms such as multisignature transactions (see footnote 2 of page 4 of the written
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`disclosure) or P2SH (97 and 104 of the written disclosure) and therefore do not
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`constitute any technological improvement to the functioning of the computer itself.
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`While the claim scopeis limited in scope to the device acting as a facilitator or
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`intermediary Examiner will also consider the two client’s participation. Thefirst client
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`device and secondclient are claimed at a generally high level and only serve as proxies
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`for the entities engagedin the transaction. As pointed out paragraphs 52-53 and 106 of
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`the written disclosure are directed towards a generic computing environment that
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`include no technological improvement to the functioning of any particular computer and
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`paragraph 110 in describing the client also describes a generic computing device with
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`no technological improvement.
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`If the combination of facilitator and two clients are
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`considered there is no meaningful technological contribution being made as the
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`facilitator and clients merely represent the computer equivalents of two parties to a
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`contract in which an intermediary is used and therefore the combination as a whole is
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`merely a mechanism for linking the abstract idea to a particular technological
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`

`

`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 15 of 59 PageID #: 936
`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 15 of 59 PagelD #: 936
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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 13
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`environment. No technological improvement is recited to the recited device, nor does
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`the combination of device and two clients serve to form an ordered combination of
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`elements that results in any technological improvement.
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`It is abundanily clear that the
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`claim does not involve any ordered combination of elements as the recited device does
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`not utilize any special properties of a network or distributed computing in order to gain
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`any technological improvement and merely are directed towards a centralized, "one-
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`size-fits-all" technological implementation and the clients merely serve as
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`representatives of human counterparts engaging in a contract (BASCOM Glob. Internet
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`Servs. v. AT&T Mobility, LLC, 119 USPQ2d 1236 (Fed. Cir. 2016)).
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`It is also clear that
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`no similarity is present with regard to McRO (McRO,Inc. v. Bandai Namco Games Am.
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`Inc., 120 USPQe2d 1091 (Fed. Cir. 2016)) as the process applied in McRO which
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`involved the evaluation of a plurality of subsequences of phonemes in order to set
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`morph weights and wasa process that was not previously used by humanbeings in
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`performing lip synchronization between the animated characters and the reproduced
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`sounds. While McRO acknowledged that human beings could perform the operations
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`recited in the steps it was also clear that human beings had never previously acted in
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`such a manner, particularly as it applied to the evaluation of subsequences of
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`phonemes in order to set the morph weights. However in the instant claims the recited
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`operations of transferring payments andutilizing trusted intermediaries in making a
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`payment are all operations that have previously been done by human beings in the
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`same manner being claimed.
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`It is also clear that there is no similarity to DDR Holdings
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`(DDR Holdings, LLC v. Hotels.com, LP, 113 USPQ2d 1097 (Fed. Cir. 2014)) as there is
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`nothing in the claims themselves or even in the written description to explicitly state or
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`

`

`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 16 of 59 PageID #: 937
`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 16 of 59 PagelD #: 937
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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 14
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`even implicitly suggest that the claims involve anything more than generic computer
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`operations.
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`It is also clear that there is no similarity to Enfish (Enfish, LLC v. Microsoft
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`Corp., 118 USPQ2d 1684 (Fed. Cir. 2016)) because nothing within the claim or the four
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`corners of the written description provides any teaching or suggestion of an improved
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`computer algorithm for analyzing data such as the self-referential table of Enfish that
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`brings about an improvementto the computer itself where Enfish taught that the claimed
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`invention brought about “increasedflexibility, faster search times, and smaller memory
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`requirements” (Enfish at 1690). There is also no technological improvement being
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`made to any external technology (Diamondv. Diehr, 450 U.S. 175, 184 (1981)). The
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`written disclosure at paragraphs 52-53, 106, 110 and 113 describe only the use of a
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`generic unimproved computing environment and describes the elements in a manner
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`that indicates that the additional elements are sufficiently well-known that the
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`specification does not needto describe the particulars of such additional elements to
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`satisfy 35 U.S.C. §112 (a) (“In other words, the claims in Diehr were patenteligible
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`because they improved an existing technological process, not because they were
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`implemented on a computer’, Alice at 1983). Therefore it is clear that no inventive
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`conceptis present sufficient to confer eligibility in light of the fact that the claims are
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`clearly directed towards an abstract idea. Therefore claims 1, 3-6 and 9 are rejected
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`under 35 U.S.C. § 101 as being directed towardsineligible subject matter.
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`11.
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`Claim 12 recites a system and therefore meets Step 1 of the 2019 Revised
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`Patent Subject Matter Eligibility Guidance as it can be viewed as a product whichfalls
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`within one of the four categories of statutory subject matter. Claim 12 recites as follows:
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`

`

`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 17 of 59 PageID #: 938
`Case 1:22-cv-01253-MN Document 15-4 Filed 11/29/22 Page 17 of 59 PagelD #: 938
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`Application/Control Number: 15/309,612
`Art Unit: 3685
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`Page 15
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`12. (Currently Arnended) A system for processing a iransaction between a first
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`clent device and a second cent device via a transfer mechanism, the system
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`comprising a computing device, the first client device, and the second chent device, and
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`the transfer mechanism: the computing device comprising:
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`& first memory comprising for sloring a first asymmetric key pair, the first
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`asymmeiric Key Daly comprising a first private key and a first public key:
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`a@ first network interf