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 .
Response to Amendment
Amendment received on 09/11/2024 is acknowledged and entered. Claims 11-39 have previously been withdrawn. Claims 1-40 are currently pending in the application.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 7, 10 and 40 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gotlieb et al. (US 2017/0046679 A1).
Claim 1. Gotlieb et al. (Gotlieb) discloses:
a) the user applying for a digital token to a registration of an issuing authority; [0028]; [0034]; [0058]; [0144]; [0202]; [0229]
b) the registration verifying the user's information; [0028]; [0034]; [0058]; [0144]; [0202]; [0229]
c) after approving the user's application, the issuing authority encapsulating the user's information and other information into an electronic package called a digital token; [0058]; [0201]; [0202]
d) the issuing authority sending the digital token to the user by electronic transmission; [0058]; [0201]; [0202]
e) the user storing one or multiple digital tokens from the same or different issuing authorities in a mobile device; [0058]; [0201]; [0202]
f) the user presenting the digital token to a terminal, said terminal being provided with verification services by a backend infrastructure; [0058]; [0202]; [0229]
g) the terminal verifying the digital token or its re-encoded form; [0202]; [0229]-[0232]
h) the user being granted permissions and/or privileges once the digital token or its re-encoded form is verified.
Claim 5. The method of Claim 1, wherein the digital token is re-encoded by:
a) the contents of the digital token being encoded into a visual code such as a QR code; b) the contents of the digital token being hashed; c) the contents of the digital token being virtualized, or d) the contents of the digital token further being tokenized, i.e., the original digital token being substituted with a digital token with non-sensitive data. [0209]; [0257]; [0323]; [0327]
Claim 7. The method of Claim 1, further comprising: the user storing one or multiple digital tokens from the same or different issuing authorities in the mobile device, the mobile device managing the digital token(s) using its mobile apps. [0025]; [0030]; [0114]; [0249]
Claim 10. The method of Claims 7 or 8, wherein the mobile device and mobile apps are further characterized in that: the mobile device or compatible terminal device visualizing the contents of one digital token and displaying the contents on the screen or generate a digital file to simulate the visual appearance of the corresponding information-contained physical medium, for visual inspection, or for copying or printing purposes. [0037]; [0101]; [0129]; [0316]; [0338]; Figs. 10C-10D
Claim 40. The method of Claim 1, wherein, in the digital token, the user's information encapsulated by the digital token is identity information corresponding to information contained in a corresponding physical medium containing identity information, or is information corresponding to information contained in a physical financial/bank card. [0037]; [0101]; [0129]; [0316]; [0338]; Figs. 10C-10D
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 status.
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.
Claim 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Gotlieb in view of Kapczynski (US 2018/0046856 A1).
Claim 2. The method of Claim 1, further comprising: the issuing authority digitalizing the user's information and encapsulating such information in an electronic package, called a digital token, which may be encrypted or non-encrypted. Gotlieb;
[0028]; [0034]; [0058]; [0202]; [0229]
Gotlieb does not explicitly teach other information corresponding to information contained in a physical medium, which is disclosed in Kapczynski [0003]; [0004]; [0020].
(Validated identification ("ID") systems and methods provide individuals with the ability to carry and present a validated digital ID for everyday use, for example as part of a digital wallet, much as one uses a driver's license or other form of ID in a physical wallet)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gotlieb to include the recited limitations, as disclosed in Kapczynski, for the benefit of providing convenience for the customer by enabling the customer provide his/her identification via a smartphone, as specifically stated in Kapczynski [0004]. Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gotlieb to include the recited limitations, as disclosed in Kapczynski, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claim 3. The method of Claim 2, wherein the digital token further comprising: information corresponding to information printed on an information-contained physical medium, for an identity including an identity card the said information being including the user's name, date of birth, issuance date, expiration date, document number including card number, and for a financial/bank card the said information including the user's name, card number, expiration date, verification codes. Gotlieb, [0034]; [0058]; [0202]; [0229]; Kapczynski, [0003]; [0004]; [0006]; [0020]. Same rationale to combine as applied to claim 2. KSR, 550 U.S. at, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claim 4. Gotlieb discloses the issuing authority sending the digital token to the user by electronic transmission, wired or wireless or a combination of both, said electronic transmission being achieved with encryption or without encryption, and the electronic transmission [0032]; [0035]; [0038]. Kapczynski discloses that the electronic transmission being done by push or pull or a combination of both. [0037]; [0048]. Same rationale to combine as in claim 2. KSR, 550 U.S. at, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gotlieb.
Claim 8. The method of Claim 1, further comprising: encrypting the one or more digital tokens stored on the mobile device, each of the digital token(s) being encrypted in layers or categories or a combination of layers and categories, according to certain criteria including but not limited to frequency of use. Official Notice is taken that it is old and well known in the art to organize information based on certain criteria for convenience of accessing the data. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gotlieb to include the recited limitations, for the benefit of conveniently accessing the data.
Claim 9. The mobile apps as recited in Claims 7 or 8, wherein the mobile device and mobile apps are further characterized in that: if the user uses their own private key for the encryption of any digital token, the private key getting additional protection such as static password or be placed in the external cloud, or being placed on separate smart cards. The Examiner notes, that the recited limitations (if the user uses their own private key…) do not move to distinguish the claimed invention from the cited reference. This phrase is conditional limitation, where the noted “if” step are not necessarily performed.
Accordingly, once the positively recited limitations are satisfied, the claim as a whole is satisfied -- regardless of whether or not other functions are conditionally invocable under certain other hypothetical scenarios MPEP 2111.04 II (Contingent Limitations); See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gotlieb in view of Kunz et al. (US 2014/0040125 A1).
Claim 10. Gotlieb discloses the mobile device and mobile apps as recited in Claims 7 or 8, further characterized in that: the mobile device or compatible terminal device visualizing the contents of any digital token. Further, Kunz et al. (Kunz) discloses
displaying the contents on the screen or generate a digital file (such as a digital image or a pdf file) to simulate the visual appearance of the corresponding information-contained physical medium, for visual inspection, or for copying or printing purposes. Figs. 5 and 6; [0023]-[0026]; [0098]
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gotlieb to include the recited limitations, as disclosed in Kunz, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Response to Arguments
Applicant's arguments filed 09/11/2024 have been fully considered but they are not persuasive.
In response to the Applicant argument that the examiner attempts to vaguely link the cited subject matter from the 2017 and 2018 applications to the 2013 provisional applications, with no specific or substantive citations from the 2013 provisional applications, the Examiner notes that the explicit reference to the 2013 provisional application was provided in the last Office action of 03/12/2024, pages 10-11, where the Examiner identified a specific paragraphs in each provisional application disclosing the subject matter of the 2017 and 2018 applications. Specifically, the Examiner maintains that the Gotlieb’s provisional applications provide support for the cited paragraphs [0028]; [0034] and [0058] as follows: the Gotlieb Provisional US 61/776594, filed March 11, 2013 discloses the subject matter at page 54, [00149] – page 74, [00190]; page 74, [00191] – page 81, [00209]; and the Gotlieb Provisional No. 61/779,334, filed March 13, 2013, discloses the subject matter at page 58, [00144] – page 81, [00194]; and page 81, [00195] – page 86, [00208].
Applicant argues that the cited provisional applications of early 2013 don't contain any enabling disclosures at all. However, Applicant does not provide any factual evidence of that, and, as such, said statement appears to be a mere attorney argument. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
Furthermore, the Examiner notes that “A prior art reference does not need to be fully functional to qualify as prior art; indeed, a prior art reference “need not work” and may even be “‘inoperative.’” Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1302 (Fed. Cir. 2010) (quoting Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).
Further, the Examiner points out that if Applicant relies on foreign priority date as the earliest effective date of the instant application, i.e. 12/08/2013 of CN201310668451.8, then, as required by LEAHY-SMITH AMERICA INVENTS ACT (AIA ), Applicant has to perfect the right of priority by providing a certified copy of the priority application, and a translation of the priority application (if not in English). A translation in English has not been submitted. Therefore, the earliest effective date of the instant application is 12/08/2014 as 35 U.S.C. 371 date of PCT/CN/2014/0932281 application. Accordingly, Applicant’s arguments regarding Gotlieb provisional applications are moot.
Conclusion
The prior art search has been conducted, with no significant prior art found.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/IGOR N BORISSOV/Primary Examiner, Art Unit 3685 1/20/2026