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 .
Status of Claims
Applicant filed an amendment on November 17, 2025. Claims 1-59 were pending in the Application. Claims 1, 5, 13, and 38 are amended. No new claims have been added. Claims 15-16, 55, and 59 have been canceled, with claims 2-4, 6-7, 9-12, 14, 17-18, 20-23, 25, 27-32, 34-36, and 42-54 remaining canceled. Claims 56-58 remain withdrawn from consideration as being directed to a non-elected invention. Claim 1 and 38 are the independent claims, the remaining claims depend on claims 1 and 38. Thus claims 1, 5, 8, 13, 19, 24, 26, 33, and 37-41 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of 35 U.S.C. §101, Applicant respectfully disagrees with the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “the claims are eligible for patenting, at least because they provide a specific technological improvement; the independent claims integrate any alleged abstract idea into a practical application by improving efficiency of the computer system; the independent claims are eligible in Step 2A Prong Two because they “reflect[] an improvement to the functioning of a computer”; and the independent claims are eligible for patenting at least because they reduce the number of API calls needed by, e.g., using API calls that perform dual functions, and they increase efficiency by, e.g., preloading a payload to be provided to the intermediary party server, thereby providing specific improvements to the computer system.”
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
The Specification, (PG Pub US 20230298027 A1, para 10), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘027 A1, para 10), discloses that the invention relates to authenticating an identity of an actor to a transacting party based on a pre-existing relationship between the actor and an identifying party, and is grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, in prong one of step 2A. (MPEP §2106.04 II.A.1.).
Claim 1 provides additional evidence, and recites the limitations “authenticates the identity of the actor, requests, via the respective network interface, a dynamic identifier from the intermediary party server, wherein the identifying party server sends to the intermediary party server, in an optimized mode, a first API call that performs dual functions of requesting the dynamic identifier from the intermediary party server and providing a payload to the intermediary party server, receives, via the respective network interface, the dynamic identifier from the intermediary party server in the form of a graphical quick response (QR) code, and provides the dynamic identifier to a computing device of the actor; … receives an identifier from the computing device of the actor, sends, via the respective network interface, the identifier to the intermediary party server for authentication, in the optimized mode, via a second API call that performs dual functions of providing the identifier to the intermediary party server and sending a payload request to the intermediary party server, and receives, via the respective network interface, a confirmation of authentication from the intermediary party server; and … receives, via the respective network interface, the request for the dynamic identifier from the identifying party server, selects the dynamic identifier, stores the dynamic identifier in the memory of the intermediary party server, sends, via the respective network interface, the dynamic identifier to the identifying party server, receives, via the respective network interface, the identifier from the transacting party server, authenticates the identifier received from the transacting party server by comparing it with the stored dynamic identifier, and sends, via the respective network interface, the confirmation of authentication to the transacting party server if the identifier matches the stored dynamic identifier”, where the italicized claim language represents the abstract idea of an “identity authentication protocol.” (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim (the bolded claim language), such as “a networked identity authentication system”, “the networked identity authentication system comprising a transacting party server of the transacting party, an identifying party server of the identifying party, and an intermediary party server of an intermediary party in secure network communication with the transacting party server and the identifying party server, each of the transacting party server, identifying party server and intermediary party server comprising a respective processor, memory and network interface”, “a respective processor”, “a respective memory”, “a respective network interface”, “the identifying party server sends to the intermediary party server”, “the intermediary party server in the form of a graphical quick response (QR) code”, and “a computing device of the actor”, represents the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity authentication protocol.”
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea, an “identity authentication protocol”, grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity authentication protocol.” The claims are not directed to improving computer functionality nor improving another technology or technical field, but improving the method for an “identity authentication protocol”. For potential improvement in an abstract idea an “identity authentication protocol”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. an identity authentication protocol concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 1 is non-statutory.
Claim 38 also recites the abstract idea of an “identity authentication protocol”, as well as the additional elements of “an intermediary party server for use in a multi-party networked identity authentication system”, “a processor”, “a memory”, “a network interface”, “the memory comprises a non-transitory computer-readable storage medium including instructions that, when executed by the processor, cause the processor of the intermediary party server to perform the steps of: …”, “in the memory”, and “via the network interface in the form of a graphical quick response (QR) code”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity authentication protocol”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of an “identity authentication protocol” using computer technology (e.g., “a processor” and “a memory”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality or improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 38 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
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, 5, 8, 13, 19, 24, 26, 33, and 37-41 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1, 5, 8, 13, 19, 24, 26, 33, 37 are directed to a “system”; and claims 38-41 are directed to a “server”. Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 1 recites an “identity authentication protocol”, which is a form of commercial or legal interactions (i.e., organizing human activity), and therefore, an abstract idea. Specifically, the claim recites “authenticates the identity of the actor, requests, via the respective network interface, a dynamic identifier from the intermediary party server, wherein the identifying party server sends to the intermediary party server, in an optimized mode, a first API call that performs dual functions of requesting the dynamic identifier from the intermediary party server and providing a payload to the intermediary party server, receives, via the respective network interface, the dynamic identifier from the intermediary party server in the form of a graphical quick response (QR) code, and provides the dynamic identifier to a computing device of the actor; … receives an identifier from the computing device of the actor, sends, via the respective network interface, the identifier to the intermediary party server for authentication, in the optimized mode, via a second API call that performs dual functions of providing the identifier to the intermediary party server and sending a payload request to the intermediary party server, and receives, via the respective network interface, a confirmation of authentication from the intermediary party server; and … receives, via the respective network interface, the request for the dynamic identifier from the identifying party server, selects the dynamic identifier, stores the dynamic identifier in the memory of the intermediary party server, sends, via the respective network interface, the dynamic identifier to the identifying party server, receives, via the respective network interface, the identifier from the transacting party server, authenticates the identifier received from the transacting party server by comparing it with the stored dynamic identifier, and sends, via the respective network interface, the confirmation of authentication to the transacting party server if the identifier matches the stored dynamic identifier”. The abstract idea is in italics, and the additional elements are in bold. (MPEP § 2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP § 2106.04 II.A.2.), the additional elements of the claim, such as “a networked identity authentication system”, “the networked identity authentication system comprising a transacting party server of the transacting party, an identifying party server of the identifying party, and an intermediary party server of an intermediary party in secure network communication with the transacting party server and the identifying party server, each of the transacting party server, identifying party server and intermediary party server comprising a respective processor, memory and network interface”, “a respective processor”, “a respective memory”, “a respective network interface”, “the identifying party server sends to the intermediary party server”, “the intermediary party server in the form of a graphical quick response (QR) code”, and “a computing device of the actor”, represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity authentication protocol.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of an “identity authentication protocol” using computer technology (e.g., “a respective processor” and “a respective memory”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 1 is non-statutory.
Claim 38 recites the abstract idea of an “identity authentication protocol”, as well as the additional elements of “an intermediary party server for use in a multi-party networked identity authentication system”, “a processor”, “a memory”, “a network interface”, “the memory comprises a non-transitory computer-readable storage medium including instructions that, when executed by the processor, cause the processor of the intermediary party server to perform the steps of: …”, “in the memory”, and “via the network interface in the form of a graphical quick response (QR) code”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identity authentication protocol”.
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of an “identity authentication protocol” using computer technology (e.g., “a processor” and “a memory”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality or improve another technology or technical field. (MPEP 2106.05 I A (f) & (h)). Therefore, claim 38 is non-statutory.
Dependent claims 5, 8, 13, 19, 24, 26, 33, 37, and 39-41 further describe the abstract idea of an “identity authentication protocol”, which is insufficient to overcome the rejections of claims 1 and 38.
Dependent claims 5, 8, 13, 24, 26, 33, and 39-41 do not recite any new additional elements that integrate the abstract idea into a practical application, and that do no more than represent a computer performing functions that correspond to implementing the acts of an “identity authentication protocol”, when analyzed under Step 2A, Prong Two.
Dependent claim 19 recites new additional elements of “the transacting party server and the identifying party server comprise a single server, and a processor of the single server”, which do no more than employ a computer as a tool to implement the abstract idea. And, as they do no more than employ a computer as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or a technical field.
Dependent claim 37 recites a new additional element of “a data server”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field.
Hence, Claims 1, 5, 8, 13, 19, 24, 26, 33,and 37-41 are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lee et al (U. S. Patent Application Publication No. 20210314309 A1) – Device For Providing Identification Information, And System For Same
Lee discloses an electronic device including: a communication circuit set to communicate with at least one authentication server for providing an identification authentication service; and a processor, wherein the processor is set to: transmit, to the at least one authentication server, first identifying information corresponding to an object to which identification information is to be provided and second identifying information corresponding to the electronic device; receive, from the at least one authentication server, information about a first item among a plurality of items of the identification information, the information about the first item being determined at least partially on the basis of the first identifying information and the second identifying information; and display, through the display, information corresponding to a first value related to the first item among the plurality of items of the identification information in response to a successful user authentication. Various other embodiments comprehended through the specification are also possible.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN CHISM whose telephone number is (571) 272-5915. The examiner can normally be reached during 9:00 AM – 3:00 PM Monday – Thursday, EST.
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/STEVEN R CHISM/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692