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 5/11/2026. 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/11/2026 has been entered.
Allowable Subject Matter
The indicated allowability of claims 1-3,5-11 and 13-22 is withdrawn in view of the newly discovered reference(s) to US Patent Pub 2007/0226784 to Ueda. Rejections based on the newly cited reference(s) follow. The applicant’s attempt to broaden the scope of the claims, have resulted in the claims being found un-patentable.
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).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation regarding the request having private data and permanent unique device identifier; and also the seed for an OTP that is discarded after first use must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
This application is claiming the benefit of prior-filed application No. 16/387751(now US Patent 11050741) was under 35 U.S.C. 120, 121, 365(c), or 386(c), has an issue fee payment on 5/26/2021, which represent the termination of proceeding. The current application was filed on 6/23/2021, which is after the termination of proceeding of patent case. Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications. The ADS needs to updated to reflect the new status.
1504.20 Benefit Under 35 U.S.C. 120 [R-10.2019]
35 U.S.C. 120 Benefit of earlier filing date in the United States.
[Editor Note: Applicable to a patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 120 (pre-AIA ) for the law otherwise applicable.]
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
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”, 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” 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” 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).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3,5-11,13-22 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent Pub 2007/0226784 to Ueda.
Regarding Claim 1, 10, 17, Ueda discloses A method comprising:
transmitting, by a processor of a user device, a service request to a one time one- time password (OTP) authorization service of a service provider, wherein the service request requests access to private data and includes a device fingerprint of a user device, (Abstract & Fig. 3 item S281, the user ID, the user ID is used by authentication server to generate an pattern seed for client device);
receiving, by a listening service executed by the processor from the service provider, from the service provider a seed for a one-time password (OTP) for the user device, 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(Fig. 3 item 283, the pattern seed that is valid for one time is sent to client & (Fig. 3 item S217 & Fig 4 item S219, the one time password is entered onto the screen);
passing the seed for the OTP from the listening service to a securities utility service, wherein the securities utility service is configured to, generate a device bound response OTP by applying a deterministic function to the seed for the OTP and the device fingerprint of the user device( based at least in part on an integrity of the user device being validate by an integrity module(Par. 0039-0040, screen with input means & Fig. 9 item 156);
transmitting, by the processor to the service provider, the device bound response
OTP generated by the user device to the service provider for validation , wherein the device bound response OTP is different from the seed for the OTP and the device bound response OTP is invalid after the predetermined time period expires for the seed for the OTP(Par. 0022-023, the seed being different than OTP used and it is used for authentication and invalid after some time);
receiving, by the processor, a validation result from the service provider (Fig. 5 item userID and pattern seed are inputted into hash function) & Par. 0022-0023; and
displaying- by the processor, a notification screen showing an outcome of the
validation result, wherein the service request is granted or denied based on the validation result(Fig. 4 itemS227, the comparing and authenticating result).
Regarding Claim 2. Ueda discloses The method of claim 1, wherein the authorization screen displays service details before transmitting of the device bound response OTP to the service provider(Par. 0069-0071, the authentication screen)
Regarding Claim 3. Ueda discloses The method of claim 1, wherein the device bound response OTP is generated in response to an integrity module confirming that the user device is in good health based on the seed for the OTP being passed to the security utility service on the user device(Par. 0065-0066, the files are created).
Regarding Claim 5.,13, 19, Ueda discloses The method of claim 1, wherein the notification screen is displayed along with at least one of a service name request, a purpose, a time, a merchant, a merchant locator, or an amount for a requested service(Par. 0064-0065).
Regarding Claim 6 Ueda discloses The method of claim 1, wherein the seed for the OTP is received with an authorization payload including at least one of a service identifier, a purpose, a time, a date, a merchant identifier, or an amount for a requested service(0072 & Par. 0074, the requesting ID and details).
Regarding Claim 7, 14, Ueda discloses The method of claim 1, wherein the device bound response OTP is transmitted from the user device via a text message(Par. 0040, the mobile phone).
Regarding Claim 8, 15, 20, Ueda discloses The method of claim 1, wherein the service request is transmitted over a first communication channel to the service provider and the seed for
the OTP is received over a second communication channel from the service provider(Par. 021-022 & Par. 0058-0060, the user and server can be mobile network or web-based).
Regarding Claim 9, 16, Ueda discloses The method of claim 1, wherein the seed for the OTP comprises a random number of at least 128 bytes in length(Par. 0078, the seed is generated randomly).
Regarding Claim 21 Ueda discloses The method of claim 1, wherein the OTP validation is OTP comprises at least seven characters( Par. 0076, derivation rule)
Regarding Claim 22. Ueda discloses The method of claim 1, wherein the OTP validation is performed without manually inputting the OTP into the user device(Par. 0073, one-time transmission means).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal Dharia can be reached on 571-272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VENKAT PERUNGAVOOR/Primary Examiner, Art Unit 2492 Email: venkatanarayan.perungavoor@uspto.gov
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