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 .
DETAILED ACTION
This office action is in response to the application filed on or reply to the remarks of 1/7/2026. The instant application has claims 1-3,5-11 and 13-22 pending. The system, method and medium for generating an OTP seed for authorization for accessing private data. There a total of 20 claims.
Response to Arguments
The applicant’s argument relating to integrated into a practical application is not persuasive. There are several court cases that illustrate a practical concept is still deemed abstract idea and ineligible by Fed. Circuit Court. The examples include device profiles for imaging device, playing bingo, or guarantee online transaction, data analysis on documents. See Digitech Image Tech's v. Electronics For Imaging, 758 F.3d 1344 (Fed. Cir. 2014); Planet Bingo, LLC v. VKGS, LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) ; Buysafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); Content Extraction and Transmission. v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014)
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 1-3,5-11 and 13-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The steps can be performed by an human on an generic computer. The claim recites the generating of OTP for authorization, which can be implemented on an generic computer. And further the steps of generating OTP is based on an mathematical algorithm using seed and permanent device identifier.
The limitation of “receiving, from the service provider, a seed for a one-time password (OTP) the for the user device from the service provider, wherein the seed for the OTP comprises a random number that is (1) valid for a predetermined time period and (2) is discarded after first use, wherein the listening service monitors for incoming seeds from the OTP authorization service of the service provider”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language, “receiving, the service provider, a seed for a one-time password (OTP) the for the user device from the service provider, wherein the seed for the OTP comprises a random number that is (1) valid for a predetermined time period and (2) is discarded after first use, wherein the listening service monitors for incoming seeds from the OTP authorization service of the service provider” in the context of this claim encompasses the user receiving an OTP seed from an service provider on an mobile phone to be entered into the computer to authorize an transaction. Similarly, the limitation of “receiving, a validation result from the service provider indicating that the service provider independently generated the device bound response OTP from the seed for the OTP and the permanent unique device identifier of the user device using a same deterministic function, wherein the seed for the OTP is discarded after receipt of the validation result;”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation done in the mind but for the recitation of generic computer components the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) Federal Register January 7, 2019. For example, but for the “by a processor” language, “receiving, , a validation result from the service provider indicating that the service provider independently generated the device bound response OTP from the seed for the OTP and the permanent unique device identifier of the user device using a same deterministic function, wherein the seed for the OTP is discarded after receipt of the validation result;” in the context of this claim encompasses the user receiving an result of confirmation of the correct entry of OTP for acceptance, e.g. as mentioned in clam 7 the mobile device gets success message. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” & “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processor to perform both the “receiving, the service provider, a seed for a one-time password (OTP) for the user device from the service provider, wherein the seed for the OTP comprises a random number that is (1) valid for a predetermined time period and (2) is discarded after first use, wherein the listening service monitors for incoming seeds from the OTP authorization service of the service provider” and “receiving, , a validation result from the service provider indicating that the service provider independently generated the device bound response OTP from the seed for the OTP and the permanent unique device identifier of the user device using a same deterministic function, wherein the seed for the OTP is discarded after receipt of the validation result;” steps. The processor in both steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of user receiving an OTP seed for entry into computer for validation and receiving positive or negative result) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform user receiving an OTP seed for entry into computer for validation and receiving positive or negative result steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Furthermore, there are several court cases where similar subject matter was found ineligible. The Federal Circuit held that a patent was directed to an abstract idea when it allowed a purchaser to use a one-time code instead of a credit card number to complete a transaction see Universal Secure Registry LLC v. Apple Inc., (Fed. Cir. 2021). Another case, which involved allowing a credit card to be used to authorize a transit ride without any other ticket or card and included the ability to automatically purchase a monthly fare voucher, were directed to an abstract idea see Smart Systems Innovations v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017).
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Venkat Perungavoor whose telephone number is (571)272-7213. The examiner can normally be reached 9-5.
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/VENKAT PERUNGAVOOR/Primary Examiner, Art Unit 2492 Email: venkatanarayan.perungavoor@uspto.gov