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 Arguments/Amendments
Regarding rejection of the claims under 35 USC 103 over Mao in view of Peng, Applicant’s arguments with respect the prior art not disclosing “mapping a structure, a format, or both of the credential template to the at least one electronic health record of the user,” have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant further submits that the prior art does not disclose “issuing a credential that verifies a health-related claim.” However, the limitation directed to the above argument merely recites the intended use of the request to issue a credential (i.e. to verify at least one health-related claim). Therefore, the above limitation will not differentiate the claims from the prior art. Applicant(s) are reminded that intended use/functional language is not given patentable weight. MPEP 2114 (II) states: "A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus' if the prior art apparatus teaches all the structural limitations of the claim,” See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter, 1987). Therefore, the rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 19, the claims recite, “retrieving health-related claim information...by mapping a structure, a format, or both of the credential template to the at least one electronic health record of the user.” It is unclear whether the above limitation is directed to first retrieving health-related claim information and then mapping said information to the credential template, first mapping the claim information and then retrieving said information, or whether the mapping somehow performs the retrieval of the information (i.e. retrieving by mapping). Furthermore, it is unclear whether the claim information is actually retrieved or merely a pointer/identifier for the claim information that is then used to map the data to the credential template. Therefore, the scope of claims 1 and 19 is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
Claims 2-14 and 20 are also rejected due to their dependence on at least claim 1 or 19.
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 8-14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mao et al. (US 2021/0218574 "Mao") in view of Peng (USP 11,093,933 "Peng") and further in view of Hasan et al. (US 2012/0130749 “Hasan”).
Regarding claims 1 and 19, Mao discloses: A method and non-transitory computer readable storage medium comprising: by a first client deployed on a terminal device of a first service provider: receiving a request for secure connection from a wallet client deployed on a terminal device of a user, the request for secure connection including a first digital identifier of the wallet client, a first public key of the wallet client, and first personal identification information of the user (Fig. 8, 0113-0114);
in response to the request for secure connection: verifying that the first personal identification information of the user is authentic (Fig. 8, Fig. 10, 0114, 0116-0117);
receiving a request to issue a credential ("target claim") that identifies a credential template (Fig. 8, 0113-0114);
and sending the first credential information with the wallet client's digital identifier to the first cloud-based agent ("proxy") to enable the first cloud-based agent to: encrypt the first credential information with the first public key of the wallet client (0099, 0121, 0196);
and forward the encrypted first credential information to the wallet client using the wallet client's digital identifier (Fig. 10, 0116-0121).
Mao does not disclose: in response to verifying that the first personal identification information of the user is authentic, sending the digital identifier of the wallet client and the first public key of the wallet client to a first cloud-based agent to enable the first cloud-based agent to store the digital identifier of the wallet client together with the first public key of the wallet client;
and in response to receiving the request to issue a credential: accessing the identified credential template;
retrieving information of the user from a first electronic health record system coupled to the first client;
populating the accessed credential template using the information of the user retrieved from the first electronic health record system to generate first credential information.
However, in the same field of endeavor, Peng discloses: in response to verifying that the first personal identification information of the user is authentic, sending the digital identifier of the wallet client and the first public key of the wallet client to a first cloud-based agent to enable the first cloud-based agent to store the digital identifier of the wallet client together with the first public key of the wallet client (Fig. 33, Col 75 line 6-28, Col 76 line 32-53);
receiving a request to issue a credential ("verifiable claim")..., wherein the request to issue the credential identifies a credential template (Fig. 33, Col 67 line 6-16, Col 75 line 6-28, Col 76 line 54-58);
and in response to receiving the request to issue a credential ("verifiable claim"): accessing the identified credential template (Col 67 line 6-24, Col 76 line 54-58);
retrieving health-related...information of the user from at least one electronic health record of the user in a first electronic health record system coupled to the first client (Fig. 29, Col 62 line 24-44, Col 63 line 40-45)...
populating, based on the structure, the format or both of the credential template, the credential template using the health-related...information retrieved from the first electronic health record system to generate first credential information (Fig. 33, Col 67 line 6-16, Col 75 line 6-28, Col 76 line 54-58).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 19 disclosed by Mao by including generating and issuing a claim comprising healthcare data as disclosed by Peng. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element (the claim issuer system of Mao) for another (the claim issuer system of Peng) to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Mao in view of Peng does not disclose: retrieving health-related claim information of the user from at least one electronic health record of the user in a first electronic health record system coupled to the first client, by mapping a structure, a format, or both of the credential template to the at least one electronic health record of the user.
However, in the same field of endeavor, Hasan discloses: retrieving health-related claim information of the user from at least one electronic health record of the user in a first electronic health record system coupled to the first client, by mapping a structure, a format, or both of the credential template to the at least one electronic health record of the user (Fig. 2, Fig. 5, 0009, 0015, 0020, 0124-0126);
populating, based on the structure, the format or both of the credential template, the credential template using the health-related claim information retrieved from the first electronic health record system (Fig. 2, Fig. 5, 0009, 0015, 0020, 0124-0126)...
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 19 disclosed by Mao in view of Peng by including retrieving and mapping health-related claim information as disclosed by Hasan. One of ordinary skill in the art would have been motivated to make this modification to enable a consistent way of indexing, storing, retrieving, and aggregating clinical data across specialties and sites of medical care (Hasan 0009).
Mao in view of Peng and further in view of Hasan does not disclose: receiving a request to issue a credential to verify at least one health-related claim associated with the user...
However, the above limitation merely recites the intended use of the request to issue a credential (i.e. to verify at least one health-related claim). Therefore, the above limitation will not differentiate the claims from the prior art. Applicant(s) are reminded that intended use/functional language is not given patentable weight. MPEP 2114 (II) states: "A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus' if the prior art apparatus teaches all the structural limitations of the claim,” See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter, 1987).
Furthermore, the Examiner notes that while the above limitations of: “sending the digital identifier of the wallet client and the first public key of the wallet client to a first cloud-based agent to enable the first cloud-based agent to store the digital identifier of the wallet client together with the first public key of the wallet client; and sending the first credential information with the wallet client's digital identifier to the first cloud-based agent to enable the first cloud-based agent to: encrypt the first credential information with the first public key of the wallet client; and forward the encrypted first credential information to the wallet client using the wallet client's digital identifier” are rejected under the prior art, the limitations merely recite the intended results of “sending the digital identifier of the wallet client and the first public key of the wallet client to a first cloud-based agent” and “sending the first credential information with the wallet client's digital identifier to the first cloud-based agent.” Therefore, so long as the prior art discloses the steps of sending the above information to a cloud-based agent (see above), the additional limitations pertaining to the intended results of such steps do not differentiate the claims from the prior art. Applicant(s) are reminded that intended result language does not have patentable weight. See Texas Instruments Inc. v. International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001). ("A (whereby/wherein) clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim"); Griffin v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002).
Regarding claim 2, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Peng further discloses: wherein the retrieving information of the user from the first electronic health record system is performed in accordance with a health care application programming interface (Col 67 line 31-40, Col 72 line 63-67, Col 75 line 37-53, Col 76, line 53-58).
Regarding claim 3, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Mao further discloses: wherein the receiving the request for secure connection from the wallet client includes receiving the request for secure connection through the wallet client capturing a two-dimensional barcode displayed by a portal application of the first client, and receiving a phone number of the user (Fig. 7, 0081, 0108).
Regarding claim 4, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Mao further discloses: registering the first service provider (0065, 0112).
Peng further discloses: invoking a cloud-based agent to perform various actions (Fig. 33, Col 75 line 6-28, Col 76 line 32-53); and
enables the first cloud-based agent to: sign the first credential information with the second private key of the first service provider (Col 77 line 19-29).
Mao in view of Peng and further in view of Hasan does not specifically disclose: by the first client: invoking the first cloud-based agent to register the first service provider, to enable the first cloud-based agent to: create a second key pair for the first service provider comprising a second private key and second public key; store the second private key; and cause publication of the second public key in a distributed ledger, and wherein the sending the first credential information with the wallet client's digital identifier further enables the first cloud-based agent to: sign the first credential information with the second private key of the first service provider, and wherein it is the first credential information signed with the second private key of the first service provider that is encrypted with the first public key of the wallet client.
However, the above limitations merely recite the intended results of “invoking the first cloud-based agent.” Therefore, so long as the prior art discloses the step of “invoking the first cloud-based agent” (see above), the additional limitations pertaining to the intended results of such a step do not differentiate the claims from the prior art. Applicant(s) are reminded that intended result language does not have patentable weight. See Texas Instruments Inc. v. International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001). ("A (whereby/wherein) clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim"); Griffin v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002).
Regarding claim 8, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Peng further discloses: wherein the information of the user obtained from the first electronic health record system is vaccination information of the user (Col 22 line 6-25, Col 24 line 35-39, Col 63 line 40-45).
Regarding claim 9, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Mao further discloses: wherein the wallet client is configured to identify the first client as corresponding to the first service provider among a list of service providers (Fig. 8-9, 0088, 0111-0115).
Regarding claim 10, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Peng further discloses: wherein the information of the user includes personal identification information of the user (Col 22 line 6-25, Col 24 line 35-39, Col 63 line 40-45).
Regarding claim 11, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 1. Mao further discloses: by the wallet client: receiving, from a second service provider, a request for the first credential information (Fig. 4, 0086);
sending a second digital identifier and a second public key of the wallet client to a second client of the second service provider (0082-0083, 0089);
identifying, by the wallet client, a second cloud-based agent ("proxy") as coupled to the second client of the second service provider (Fig. 5, 0098-0101);
encrypting signed first credential information with a second private key of the wallet client to generate signed and re-encrypted first credential information, the second private key of the wallet client corresponding to the second public key of the wallet client (Fig. 5, 0087, 0098-0101);
and sending, through the second cloud-based agent, the signed and re-encrypted first credential information to the second client (Fig. 4, 0086-0087, 0102-0106).
Regarding claim 12, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 11. Mao further discloses: wherein the second cloud-based agent decrypts the signed and re-encrypted first credential information using the second public key of the wallet client to obtain the signed first credential information and sends the signed first credential information to the second client (0087, 0104).
Regarding claim 13, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 12. Mao further discloses: by the second client: obtaining, through the second cloud-based agent, a third public key of the first client from a distributed ledger, and verifying authenticity of the signed first credential information using the third public key (Fig. 7, 0066, 0068, 0089, 0108).
Regarding claim 14, Mao in view of Peng and further in view of Hasan discloses all limitations of claim 13. Peng further discloses: wherein the verifying authenticity of the signed first credential information is conducted by the second cloud-based agent (Col 67 line 40-50, Col 85 line 28-60).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mao in view of Peng and Hasan as applied to claim 1 above, and further in view of Bulleit et al. (US 2018/0060496 "Bulleit").
Regarding claim 5 Mao in view of Peng and Hasan discloses all limitations of claim 1. Mao further discloses: providing programs configured to deploy the wallet client to the terminal device of the user based on the received identifier (0066, 0077);
and causing the wallet client to be deployed at the terminal device of the user, the wallet client including the digital identifier of the wallet client, the first public key and a first private key configured to decrypt a data encrypted using the first public key (0066, 0077, 0084).
Mao in view of Peng and Hasan does not disclose: receiving an identifier of one or more of the user or the terminal device of the user.
However, in the same field of endeavor, Bulleit discloses: receiving an identifier of one or more of the user or the terminal device of the user (Fig. 4, 0089-0092);
providing programs configured to deploy the wallet client to the terminal device of the user based on the received identifier (Fig. 4, 0089-0092);
and causing the wallet client to be deployed at the terminal device of the user, the wallet client including the digital identifier of the wallet client, the first public key and a first private key configured to decrypt a data encrypted using the first public key (Fig. 4, 0089-0092).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 5 disclosed by Mao in view of Peng and Hasan by including receiving a user identifier as disclosed by Bulleit. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element (the wallet DID of Mao) for another (the user identifier of Bulleit) to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 6, Mao in view of Peng and Hasan and further in view of Bulleit discloses all limitations of claim 5. Bulleit further discloses: wherein the providing the programs configured to deploy the wallet client to the terminal device of the user includes sending a message to the terminal device, the message including a link configured to deploy the wallet client based on a selection by the user (Fig. 4, 0045-0049, 0089-0092).
Regarding claim 7, Mao in view of Peng and Hasan and further in view of Bulleit discloses all limitations of claim 5. Bulleit further discloses: wherein the receiving the identifier of the one or more of the user or the terminal device of the user includes receiving the identifier through one or more of a portal application of the first client by human input or a service application of the first client from a first application of the first service provider that is different from the first client (0049, 0089-0092).
Conclusion
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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