DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt of Applicant’s amendments filed on December 4, 2025 is acknowledged.
Response to Amendment
Applicant amended claims 25, 33-36, and 38-40.
Applicant previously cancelled claims 1-24, 37, and 44.
Claims 25-36, 38-43, 45 and 46 are pending and have been examined.
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
Regarding Claim Objections
Examiner initially objected to claim 33 due to a grammatical error. Applicant amended the claim to correct the error. Examiner withdraws this objection.
Regarding 101 Rejections
Examiner initially rejected claims 25-36, 38-43, 45 and 46 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims do not recite an abstract idea. Examiner does not find this argument persuasive. Applicant merely alleges the claims do not recite an abstract idea and provides no analysis as to why the claims are not directed to Certain Methods of Organizing Human Activity or a Mental Process. Merely having a different opinion as to how to describe the thrust of the claims does not change what the claims actually recite. Applicant’s claims are not addressing something technological but having a document with different levels of redaction/classification and creating a document package where the different levels are combined are collected together. Examiner identified the limitations which define the abstract idea and how they are directed to a commercial/legal practice and can be performed in the mind Since they are commercial activity/a mental process the claims fall into the grouping of Certain Methods of Organizing Human Activity and a Mental Process and therefore constitute an abstract idea (and thus a judicial exception). Applicant argued that there is no “pen and paper” equivalent of the claims; the equivalent would be a folder/manilla envelope/box with multiple copies/versions of a particular document (e.g., an unredacted copy of a memo that someone with the highest security clearance can read and a redacted copy that someone with a lesser security clearance can read). Furthermore, Applicant is not addressing an internet-centric problem or a technological solution to a technological problem. Applicant is addressing a non-technical problem presenting a document with different levels of security with a non-technical solution let portions of the document only be visible to people with the appropriate level of security.
Applicant argued that the claims a recite a practical application of the judicial exception. Applicant argued the claims present a technical improvement. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. Applicant is addressing a business problem (providing access to a document) with a business solution (have them provide the necessary credential). Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology. It is not a technical solution to use biometrics to grant access to something. The identified limitations do no amount to a practical application because they are a part of the abstract idea. Outside of the abstract idea there remains only the computer implementation of the abstract idea and extra-solution activity. Neither of these are indicative of a practical application. Applicant’s claims do not address a technical limitation/deficiency in the art and thus does not amount to a practical application.
Applicant argued that they recite a combination of steps which recite something other than what is well understood, routine, and conventional. Examiner does not find this argument persuasive. A “useful combination of elements” is not the standard for determining if something is something other than what is well understood, routine, and conventional. As stated above Applicant is merely using existing technology as a tool; for its intended purpose in the intended manner. Applicant again argued that Examiner has not provided the proper evidence/analysis that the claims are well-understood, routine and conventional. Examiner does not find this argument persuasive. Applicant is mistaken that Examiner must provide evidence that the underlying abstract idea is well-understood, routine and conventional. It is the additional elements that must be shown to be well-understood, routine and conventional. Outside of the abstract idea, there is only the computer implementation of the abstract idea and extra-solution activity. Examiner provided evidence that these are well-understood, routine and conventional limitations. Examiner has provided the proper evidence as required by Berkheimer.
Examiner maintains this rejection.
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 25-36, 38-43, 45 and 46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea which may be summarized as providing access to a document.
Step 1 Analysis
Applicants claims are directed to a process (claims 40-46), machine (claims 25-32), and manufacture/product (claims 33-39).
Step 2A, Prong 1 Analysis
Claim 25 recites the abstract idea/limitations of:
receive data indicative of a subject document;
analyze the data to recognize at least a format and layout in the subject document;
generate a… subject document based on the format and the layout associated with a user,
generate a first portion of the… subject document comprising a first security level based on the format or the layout,
generate a second portion of the… subject document comprising a second security level based on the format or the layout,
associate a signature with the… subject document to form a document package;
embed data with the subject document in the document package,
wherein the data includes an indication of the first portion and the second portion and the first security level and the second security level;
encrypt the… subject document within the document package such that it is accessible by a biometric scan of the user and by receiving credential information;
upon obtaining the biometric scan and obtaining the credential information, generate an indicium configured to be scannable by a scanning device;
transmit the digital indicium for display; and
publish the document package to a third party; and
receive at least a portion of the document package;
verify the signature associated with the document package;
store the document package in a third-party wallet;
receive, from the third party, a request to access the subject document;
receive, from the third party, a third-party credential indication;
provide, to the third party, access to said first portion of the subject document based upon a credential level of the third-party credential indication without providing access to said second portion of the subject document;
perform a scan of the digital indicium provided;
and provide access to the second portion of the subject document to the third party based on the scan.
As drafted these limitations are a process that falls within the “A Mental Process” grouping of abstract ideas and the “Certain Methods of Organizing Human Activity” grouping of abstract ideas; but for the recitation of generic computer components. Specifically, the claims recite providing access to a document based on a security level. This is a mental process that can be performed in the human mind. Additionally, the claims recite performance of the limitation as a fundamental economic practice because the claims involve risk mitigation. If a claim limitation, under its broadest reasonable interpretation, recites a mental process or certain methods of organizing human activity, then it recites an abstract idea.
Claims 33 and 40 recite the abstract idea/limitations of:
managing sensitive documents in a wallet,
receiving a document package,
wherein the document package includes a… subject document comprising a signature;
performing an analysis of the… subject document to recognize at least a format and a layout in the… subject document;
identifying a first portion of the… subject document and a second portion of the… subject document based on the format or the layout,
wherein the first portion is a first field of a plurality of fields in the… subject document, and the second portion is a second field the plurality of fields in the… subject document,
each field comprising distinct independent properties recognized by the analysis,
generating data including a corresponding sensitivity level for the first portion and the second portion,
encrypting the… subject document;
storing the document package in the biometric thin wallet;
receiving, from a requestor and by the biometric thin wallet, a request to access the… subject document;
receiving, from the document owner, a first credential indication indicative of a credential level associated with the user;
obtaining, from the document owner, a biometric identification;
receiving biometric information indicative of an identity of the user;
providing, to the requestor, the data and the corresponding sensitivity level for each field;
providing, to the requestor, access to said first portion of the… subject document based upon a credential level of the first credential indication and the biometric identification, without providing access to said second portion of the… subject document;
receiving, from the requestor, a second request to transfer the… subject document to a third party;
requesting, from the document owner, a second credential indication indicative of a higher credential level than the first credential indication,
providing access to the… subject document to the third party;
providing an indicium;
displaying an indicium configured to be scanned;
performing a scan of the indicium displayed;
and providing access to the second portion of the… subject document based on the scan.
As drafted these limitations are a process that falls within the “A Mental Process” grouping of abstract ideas and the “Certain Methods of Organizing Human Activity” grouping of abstract ideas; but for the recitation of generic computer components. Specifically, the claims recite providing access to a document based on a security level. This is a mental process that can be performed in the human mind. Additionally, the claims recite performance of the limitation as a fundamental economic practice because the claims involve risk mitigation. If a claim limitation, under its broadest reasonable interpretation, recites a mental process or certain methods of organizing human activity, then it recites an abstract idea.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recite generic system components for implementing the abstract idea and insignificant extra-solution activity. The claims recite the additional limitations of a digital wallet, a user device, a document originator serve, metadata, a display, a non-transitory computer readable storage medium, a computer program, processing element, a digital wallet system, digital indicium, a digital scanning device, a third-party device, a thin wallet, a communication device, a datastore, at least one processor, a biometric scanner, a third party digital wallet, a biometric thin wallet, a digital signature, a blockchain, a document owner device; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using one or more generic computers. These limitations generally link the use of the judicial exception to the technological environment. They are not indicative of integration into a practical application. The limitations of:
receive data indicative of a subject document;
receiving a document package,
storing the document package in the wallet;
receiving, from a user, a request to access the subject document;
receiving, from the user, a credential indication;
providing, to the user, the data including the indication of the plurality of fields and the corresponding sensitivity level for each field;
providing, to the user, access to said first portion of the subject document based upon a credential level of the credential indication, without providing access to said second portion of the subject document;
providing an indicium;
displaying an indicium configured to be scanned;
send the document package to a third party; and
receive at least a portion of the document package;
store the document package in a wallet;
receive, from the third party, a request to access the subject document;
receive, from the third party, a credential indication;
provide, to the third party, the data including the indication of the plurality of fields and the corresponding sensitivity level for each field;
transmit the digital indicium for display;
receiving biometric information indicative of an identity of the user;
receiving a second request to transfer the subject document;
amount to insignificant extra-solution activity. These steps are mere sending, receiving, and storing of data, which courts have recognized as insignificant extra-solution activities see MPEP 2106.05(d)(II)(i). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a digital wallet, a user device, a document originator serve, metadata, a display, a non-transitory computer readable storage medium, a computer program, processing element, a digital wallet system, digital indicium, a digital scanning device, a third-party device, a thin wallet, a communication device, a datastore, at least one processor, a biometric scanner, a third party digital wallet, a biometric thin wallet, a digital subject document; amount to no more than mere components to implement the judicial exception using a generic computer components, and/or generally link the abstract idea to a particular technological environment. The limitations of:
receive data indicative of a subject document;
receiving a document package,
storing the document package in the wallet;
receiving, from a user, a request to access the subject document;
receiving, from the user, a credential indication;
providing, to the user, the data including the indication of the plurality of fields and the corresponding sensitivity level for each field;
providing, to the user, access to said first portion of the subject document based upon a credential level of the credential indication, without providing access to said second portion of the subject document;
providing an indicium;
displaying an indicium configured to be scanned;
send the document package to a third party; and
receive at least a portion of the document package;
store the document package in a wallet;
receive, from the third party, a request to access the subject document;
receive, from the third party, a credential indication;
provide, to the third party, the data including the indication of the plurality of fields and the corresponding sensitivity level for each field;
amount to the sending and receiving data between devices and data storage, claimed at a high level of generality. These insignificant extra-solution activities are also well-understood, routine, and conventional as recognized by the federal courts See MPEP 2106.05(d)(II)(i). See Applicant’s specification paragraphs [0025, [0076-0085], about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not amount to significantly more than the abstract idea because they do not impose any meaningful limits on practicing the abstract idea. Thus Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 26, 29, 31, 32, 34, 36, 38, 39, 41, 43, and 45, these claims recite limitations that further define the same abstract idea noted in independent claims 25, 33, and 40. Therefore, claims 26, 29, 31, 32, 34, 36, 38, 39, 41, 43, and 45 are considered ineligible subject matter for the reasons given above.
As for dependent claims 27, 28, 30, 35, 42, and 46, these claims recite limitations that further define the same abstract idea noted in independent claims 25, 33, and 40. In addition, the recite the additional elements of
receive an authentication request from the third party;
send an authentication message to the third party upon a determination that the key is indicative of authenticity.
receive a second credential indication,
and provide, to the third party, access to a third portion of the subject document.
receive, from the third party, a second request to transfer the subject document to the third party;
receiving a credential within the range of values;
This is considered insignificant extra-solution activity, because as drafted the limitations are mere data gathering and storing of information. These limitations do not qualify as a practical application of the judicial exception or significantly more. See MPEP 2106.05(g). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 27, 28, 30, 35, 42, and 46 are considered ineligible subject matter.
Thus, the dependent claims 26-32, 34-36, 38-43, 45, and 46 are not patent-eligible either.
Examiner Request
The 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 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art
There was no prior art rejection on file. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694