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 .
Terminal Disclaimer
The Terminal Disclaimer filed 09/10/2024 has been approved and recorded.
Claims Amended
The Amendment filed 07/01/26 has been entered.
Claims new:
(1) Independent claim: 0.
(2) Dependent claim: 6.
Claims canceled: dependent claim 3.
Claim Status
Claims 1-2 and 4-6 are pending. They comprising of 1 group:
1) Method1: 1-2 and 4-6.
As of 07/01/2026, independent claim 1 is as followed:
1. (Previously presented) A universal certified and qualified contracting method of a contract issued by an issuer and to be signed by a receiver, the method comprising:
[1] generating, by an issuer, a message using a Connectaclick contract server that in turn comprises at least the contract and data of the receiver of the contract,
[2] certifying the content of the contract using a Mailcert email management system, and
[3] sending the message to the receiver,
[4] determining whether the receiver has a digital certificate, it is valid and can be accessed,
[5] using an identity verification process of the receiver when in the previous step it is determined that the receiver does not have a digital certificate, it is not valid or it cannot be accessed, wherein using the identity verification process of the receiver in turn comprises:
[i]. initiating an image capture corresponding to identifying an official documentation corresponding to the receiver and a viewing wherein at least one part of the body of the receiver is assessed,
[ii]. carrying out a verification of the identity of the receiver based on a comparison of the image capture and the official documentation,
[5(i)] wherein the image capture is carried out using a WEBRTC video server for video streaming, and is performed by the steps of:
[(iii)] indicating to the receiver to show an official documentation and at least one photo of a part of the body of the receiver for the capture thereof in the video streaming, and
[iv] extracting photos of the official documentation from the video streaming and at least one photo of the part of the body of the receiver,
[v] subsequently, verifying using biometrics whether at least one photo of the official documentation from the video streaming and the at least one photo of the part of the body coincide with verification parameters, and
[vi] if the at least one photo of the official documentation from the video streaming and the at least one photo of the part of the body do not coincide with verification parameters, informing the receiver that the receiver cannot continue.
[6] generating a short-term digital certificate for the contracting session, with a validity period no greater than 24 hours,
[7] adding a first timestamp, stamping the short-term digital certificate with the first timestamp,
[8] showing the contract to the receiver and sending to the receiver, via Short Message/Messaging Service (SMS), a keyword by way of temporary one-time password (OTP) such that an acceptance is generated by the receiver signing the contract with the keyword,
[9] generating a final evidence document comprising:
* short-term digital certificate,
* the first timestamp,
* the content of the contract, as legible text,
* the keyword by way of temporary OTP,
* time, and
* a verified identity,
[10] signing the final evidence document by means of a digital signature generating a certificate of the signed contract, and
[11] sending:
* a first copy of the certificate of the signed contract to the issuer, and
* a second copy of the certificate of the signed contract to the receiver, receiver,
“[5(i)] wherein the image capture is carried out using a WEBRTC video server for video streaming, and is performed by the steps of:
[(iii)] indicating to the receiver to show an official documentation and at least one photo of a part of the body of the receiver for the capture thereof in the video streaming, and
[iv] extracting photos of the official documentation from the video streaming and at least one photo of the part of the body of the receiver,
[v] subsequently, verifying using biometrics whether at least one photo of the official documentation from the video streaming and the at least one photo of the part of the body coincide with verification parameters, and
[vi] if the at least one photo of the official documentation from the video streaming and the at least one photo of the part of the body do not coincide with verification parameters, informing the receiver that the receiver cannot continue.”
Note: for referential purpose, numerals (1)-(16) are added to the beginning of each step or element.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e.,
(1) process,
(2) machine,
(3) manufacture or product, or
(4) composition of matter.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception, i.e.,
(1) law of nature,
(2) natural phenomenon, and
(3) abstract idea.
and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include:
(i) a method of organizing human activities,
(2i) an idea of itself, or
(3i) a mathematical relationship or formula.
For instance, in Alice Corp. (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), the Court found that “intermediated settlement” was a fundamental economic practice, which is considered as (i) a certain method of organizing human activities, which is an abstract idea.
Step 1:
In the instant case, with respect to claims 1-2 and 4-6:
Claim category:
(1) Method: 1-2 and 4-6.
Analysis:
1. Method: claims 1-2, and 4-6 are directed to a process (multiple steps) for creating a qualified document, i.e. a contract, issued by an issuer and to be signed by a receiver comprising the general steps of: generating a contract document, certifying the content, sending the contract to a receiver, determining whether the receiver has a digital certificate, if not, set up an alternative validation by capturing image of the receiver using a video, validating the captured image using biometrics, generating a short-term certificate with a time stamp, showing the contract to the receiver, signing the final document, sending the signed document to both participants, which is an abstract idea (Step 1:Yes).
Thus, the claims are generally directed towards one of the four statutory categories under 35 USC § 101.
Step 2A,
(1) Prong One: Does the claim recite a judicial exception?
(2) Prong Two: Are there any additional elements that integrate the judicial exception into a practical application?
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, then proceeds to step 2B.
Step 2B: Are there any additional elements that adds an inventive concept to the claim? Determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Actual Analysis:
A. Step 2A, Prong One:
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1, as exemplary, recites the abstract idea of for creating a qualified document, i.e. a contract, issued by an issuer and to be signed by a receiver comprising the general steps of generating a contract, certifying the content, sending the contract to a receiver, determining whether the receiver has a digital certificate, if not, set up an alternative validation by capturing image of the receiver using a video, validating the captured image using biometrics, generating a short-term certificate with a time stamp, showing the contract to the receiver, signing the final document and sending the signed document to both participants.
These recited limitations fall within the “Certain Methods of Organizing Human activities” grouping of abstract ideas as it relates to commercial and legal interactions including agreements in the form of contracts with different rules for recipient authentication. Accordingly, the claim recites an abstract idea.
(ii) commercial or legal interactions (including agreements in the form of contracts; Legal obligations; Advertising, marketing or sales activities or behaviors; business relations);
The claims recites the additional elements of:
Steps: Types
[1] generating … a message (data). Data gathering, Insignificant extra-solution Activity (IESA).
[2] certifying content (data). Mental/verify/Business activity.
[3] sending the message (data). Data sending, IESA.
[4] determining whether …. Mental/verifying item.
[5] using id verification process…. Mental/verifying item.
(i) initiate image capture… Data gathering.
(ii) carry out a verification. Mental/analysis.
(iii) image captured using WV server. Computer operation-conventional.
(iv) indicate … to show document. Mental/verifying.
(v) extract photos (data) …. Data gathering.
(vi) verify using biometrics… Mental/verifying.
(vii) inform receiver: no continue. Data transmission, IE-SA.
[6] generate certificate (data) … Business activity/create a certificate document.
[7] adding a timestamp. Business activity/date the document.
[8a] showing the contract (data)…. Data sending, IE-SA.
[8b] sending a keyword (data) … Data sending, IE-SA.
[9] generating a document (data) … Business activity/generating a document.
[10] signing the document (data) … Business activity/signing the document.
[11] sending the document (data) … Data sending, IE-SA.
* a 1st copy to the issuer. Data sending, IE-SA.
* a 2nd copy to the receiver. Data sending, IE-SA.
“[iii] capturing image (data) … Business activity/verifying.
[vi] verifying photo (image)… Business activity/verifying.
[vii] informing a decision (data) to entity. Data sending, IESA.”
As shown above, steps [1], [3], [8a], [8b], and [11] are mere data gathering and data sending recited at high level of generality, and thus are insignificant extra-solution activities (IESA).
Steps [2], [4]-[7], and [9]-[10] are human activities/ mental activities and business activities for generating a contract document, verifying entities and items, signing the document and verifying entities and item again, for creating a certified and qualified contract, and then send the signed document to the involved parties. These mental steps or well known business activities are carried out using a generic computer. The additional computer elements of [I] a Connectaclick contract server, Mailcert email management system, WEBRTC video server, and one or more processors; are well known and generic computer devices performing generic computer functions.
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea (e.g., a fundamental economic practice or mental processes) does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
B. Step 2A, Prong Two:
The judicial exception is not integrated into a practical applications because in particular, the claims recites a method for creating a qualified document, i.e. a contract, for two parties with different scenarios for user digital certification. The user device in both steps is recited a high-level of generality (i.e. as a generic device performing generic computer function of (1) generating using a Connectalick contract server which appears to be a general computer for performing the “generating” function, certifying the content of the contract using a Mailcert email management system which appears to be a general computer for performing the “email management” function, image capture using a WEBRTC Video server, validating the captured image using biometrics, sending, analyzing verifying, adding timestamp, generating a document and sending the signed document to both parties such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Additionally, receiving transmitting the information and displaying information to the user device amounts insignificant extra-solution activity.
The combination of these additional elements is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
C. Step 2B:
As shown above, steps [1], [3], [8a], [8b], and [11] are mere data gathering and data sending recited at high level of generality, and thus are insignificant extra-solution activities (IESA).
Steps [2], [4]-[7], and [9]-[10] are human activities/ mental activities and business activities for generating a contract document, verifying entities and items, signing the document and verifying entities and item again, for creating a certified and qualified contract. These mental steps or well known business activities are carried out using a generic computer. The additional computer elements of [I] a Connectaclick contract server, Mailcert email management system, WEBRTC video server, and one or more processors; are generic computer devices performing generic computer functions.
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic device.
(2B) The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above, the additional element of determining whether the receiver has a digital certificate, if not, set up an alternative validation by capturing image of the receiver using a video server, validating the captured image using biometrics, generating a short-term certificate with a time stamp, showing the contract to the receiver, signing the final document and sending the signed document to both participants amounts to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. The additional element receiving information, analyzing the information, generating a contract document, adding a timestamp, showing the contract document, signing the document and sending the document to the user device was considered insignificant extra-solution activity in Step 2A, prong 2.
The user device in both steps is recited a high-level of generality (i.e. as a generic device performing generic computer function of (1) generating using a Connectalick contract server which appears to be a general computer for performing the “generating” function, certifying the content of the contract using a Mailcert email management system which appears to be a general computer for performing the “email management” function, image capture using a WEBRTC Video server, validating the captured image using biometrics, sending, analyzing verifying, adding timestamp, generating a document and sending the signed document to both parties such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Additionally, receiving transmitting the information and displaying information to the user device amounts insignificant extra-solution activity.
Re-evaluating here in step 2B, this is also determined to well-understood, routine, conventional activity in the field. The Symantec, TLI, and OIP Techs, court decisions cited in MPEP 2106.05(d)(II) indicate that mere receipt or transmission of data over a network, sorting data, analyzing data, and transmitting the data is a well-understood, routine and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible.
As for WEBRTC, applicant has shown on 09/04/24, that this device is conventional device for web (internet) real time communication and permits video streaming.
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As for dep. claim 2 (part of 1 above), which deals with further details of message generation types, SMS or email, this further limits the abstract idea of the message transmittance without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claim 2 is not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claim 4 (part of 1 above), which deals with further details of certificate authority alternative and timestamp, this further limits the abstract idea of the certificate authority without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claim 4 is not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claim 5 (part of 1 above), which deals with further details of the feature of body assessment, a face, this further limits the abstract idea of the assessed body without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claim 5 is not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claim 6 (part of 1 above), which deals with further details of the generated short-term certificate, by a CA server, this further limits the abstract idea of the generated certificate feature without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claim 6 is not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
Therefore, claims 1-2 and 4-6 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more. step 2B: NO
Response to Arguments
Applicant's amendment and arguments filed 7/1/2026 have been fully considered and the results are as followed:
1) 112 (b) rejection: withdrawn.
2) 101 Rejection:
(1) Step 2A, Prong 1:
Applicant’s comment on pages 7-8 that even though the claims involves aspects of document verification, i.e. contract management, that they provide a specific technological improvement in the field of secure digital contracting and identity verification using elements (1)-(2) on pages 7-9, thus integrate the abstract idea into a practical application is noted but not persuasive. The claim may improve the field of secure digital document communication and identity verification but these are more of business problems and not technical problems. The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field.
(2) Step 2A, Prong 2:
Applicant’s comments on pages 9-11 that even though the claims involves aspects of document verification, i.e. contract management, that they provide a specific technological improvement in the field of secure digital contracting and identity verification using elements (1)-(2) on pages 7-11, thus integrate the abstract idea into a practical application is noted but not persuasive. The claim may improve the field of secure digital document communication and identity verification but these are more of business problems and not technical problems. The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field.
As for the comment with respect to new dep. claim 6 on page 7, which deals with a feature of the generated short-term digital certificate, generated by a Certification Authority (CA) server after the verification of the identity of the receiver is accepted, this appears to be well known business practice for providing a short-term certificate or a short term solution due to a credential availability failure. Applicant’s comment that this deals with a specific computer-network problem is not persuasive because this is not a computer network problem but a certification verification issue on the computer network.
(1) The insertions of (1) generating using a Connectalick contract server which appears to be a general computer for performing the “generating” function, certifying the content of the contract using a Mailcert email management system which appears to be a general computer for performing the “email management” function, image capture using a conventional video server are not considered as “significantly more” and/or provide “inventive concept”. The elements are conventional tools or generic computer with additional functions.
(2) As for the arguments on pages 12-13 with respect to the device WEBRTC, that this device is conventional device for web (internet) real time communication and permits video streaming.
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(3) Applicant’s comments on pages 10-11 that the claims are analogous to the two eligible cases, (a) Enfish, LLC vs. Microsoft Corp., and () DDR Holdings, LLC v. Hotels.com are not persuasive for the following reasons:
a) McRo, Inc. v. Bandai Namco Games America Inc.
McRO’s patent describes a method for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: “phonemes” and “morph targets.” A “phoneme,” is “the smallest unit of speech, and corresponds to a single sound.” A “morph target” is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth positions, each corresponding to a different phoneme or set of phonemes.”
This is not analogous with the claimed invention which deals with a method for creating a qualified document, i.e. a contract, issued by an issuer and to be signed by a receiver comprising the general steps of generating a contract, certifying the content, sending the contract to a receiver, determining whether the receiver has a digital certificate, if not, set up an alternative validation by capturing image of the receiver using a video, validating the captured image using biometrics, generating a short-term certificate with a time stamp, showing the contract to the receiver, signing the final document and sending the signed document to both participants.
b) Enfish LLC vs. Microsoft Corp (May 12, 2016)
Claim 17 of US Patent 6,151,604 recites:
A data storage and retrieval system for a computer memory, comprising:
[1] means for configuring said memory according to a logical table, said logical table including:
(i) a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
(ii) a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
[2] means for indexing data stored in said table.
The ‘604 and ‘775 patents are directed to an innovative logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. The CAFC said on page 12, 1st paragraph, that the "plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity". Also, on the 2nd paragraph that “the claims at issue … are directed to specific improvement to the way computer operate, embodied in the self-referential table.”.
3) CosmoKey Solutions GmbH: no similarity to the current claimed invention.
4) Ancora Technologies, Inc. : no similarity to the current claimed invention.
5) Koninklijke KPN N.V.: no similarity to the current claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tan "Dean" D NGUYEN whose telephone number is (571)272-6806. The examiner can normally be reached on M-F: 6:30-4:30 PM (ET).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah M Monfeldt can be reached on 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAN D NGUYEN/Primary Examiner, Art Unit 3689
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