DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 04/29/2025.
Claim 1 is amended.
Claims 8-20 are withdrawn.
Claims 21-29 are canceled.
Claims 1-7 are pending.
Claims 1-7 have been examined.
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
Applicant's arguments filed 04/29/2025 have been fully considered but they are not persuasive.
NOTE: In the interest of compact prosecution, the claims examined are the claims from April 29, 2025 and claim 1 will be regarded as ‘currently amended’ and not ‘previously presented’. Regarding Applicant’s statements with respect to claims 21-29, these arguments are moot as the claims are cancelled.
101
Applicant argues the 101 rejection “improperly abstract the invention and ignores its technical character”. Examiner disagrees.
For example, Applicant states “the claimed method transforms ID information into a non-reversible, deterministic hash, ensuring verifiable linkage without exposing raw data.” First, the limitation in question reads “generating a first unique identifier from said IDI using a deterministic, non-reversible transformation mechanism whereby said first unique identifier is consistent despite variations in format, noise, or errors produced in said IDI….” There is no recitation of a transformed ID information into a non-reversible, deterministic hash, ensuring verifiable linkage without exposing raw data and furthermore, the limitation in question does not appear to be supported by Applicant’s disclosure as written. Applicant’s arguments follow the same format of arguing concepts not reflected in the limitations. These “technical characters” are either not claimed or the disclosure does not recite them either. Arguing that NFTs are “structurally and cryptographically bound to unique identifiers” go beyond mere tokenization, when the limitation itself recites “retrieving a second unique identifier associated with a non-fungible token (NFT) wherein said NFT is held in a crypto wallet, wherein the individual has authorized access to said crypto wallet and said NFT contains encrypted identity metadata”, recites an NFT that is being used an a mere token. The rejection is maintained.
103
Lablans teaches using a deterministic, non-reversible transformation mechanism (Abstract; column 3, line 49-61, column 31, line 62-67).
Lablans – But the corresponding n-state switching operations are meaningful as they process signals in a deterministic and often invertible way that is useful in cryptographic computers… Hashing in general refers to a (usually non-reversible and one way) transformation process, for instance to indicate a possible change in status, hashing can be achieved via a finite field. (column 3, line 49-61, column 31, line 62-67)
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
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., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even 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., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving identification information … generating a first unique identifier … retrieving a second unique identifier … and applying at least one deterministic rule ….” The recited limitations fall within the mental processes grouping of abstract ideas, specifically, evaluating information, for example, receiving information, creating an identifier, receiving another set of information and comparing them to see if they match. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application. The recitation of a non-fungible token (NFT) is an association and does not preclude the claim from reciting an abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving”, “generating” “getting” and “applying” are not additional elements and they amount 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. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a mental process as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Claims 2, 3, and 5-7 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Claim 4 recites functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-7 are also rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “generating a first unique identifier from said IDI using a deterministic, non-reversible transformation mechanism whereby said first unique identifier is consistent despite variations in format, noise, or errors produced in said IDI….” According to the disclosure(¶ 154, 177, 188, 253), “By applying the deterministic algorithm, e.g. a cryptographic hash function, on a formalized string of IDI, we make sure that: 1) the same ID hash can only be reproduced by supplying the same IDI, and 2) variations of the same IDI (e.g. in format) will not cause it to produce different hashes. … However, those of skill in the art will be appreciated that many other options are also possible, as long as they provide a deterministic method to produce a unique and deterministic value from two other values….Because generating the ID hash is a step involved in many processes, such as, Identification Process or Identification Token Creation Process, we need to design a novel system so that the ID hash can be generated correctly and timely. The design should also be able to reduce the risks of human or system errors. For example, these errors could occur due to the complexity in the rules, or the algorithms, used in the system. So the algorithms should be compact, but clear and precise enough so that a simple computer-based program can implement it effectively.” The disclosure provides for applying a deterministic algorithm to produce the same hash. The disclosure does not provide support for ‘generating a first unique identifier from said IDI using a deterministic, non-reversible transformation mechanism whereby said first unique identifier is consistent despite variations in format, noise, or errors produced in said IDI’. Dependent claims 2-7 are rejected.
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 1-7 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.
Claim 1 recites “generating a first unique identifier from said IDI using a deterministic, non-reversible transformation mechanism whereby said first unique identifier is consistent despite variations in format, noise, or errors produced in said IDI….” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “deterministic, non-reversible transformation mechanism… despite variations in format, noise, or errors produced in said IDI” in the claim is unclear as the disclosure also fails to define the terms used or in occasion makes no mention of them at al. The terms are additionally indefinite because the specification does not clearly redefine the term. Dependent claims 2-7 are rejected.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lidsky (US 10,673,847) (“Lidsky”), and further in view of Lablans (US 11,093,213) (“Lablans”).
Regarding claim 1, Lidsky discloses a. receiving identification information (IDI) from an individual (Abstract; Figure 1, 2; column 8, line 15-67, column 29, line 54-64, column 31, line 1-16, column 34, line 41-67);
Lidsky – The user is authenticated (when a match is identified between the IUT identifier stored on the blockchain, and a computed value (e.g., encrypted value, such as a hash) of a user provided password and the wallet address provided by the user. … The wallet address may be associated with a unique name (optionally selected by the user, for example “John Doe 123”), where the unique name serves as a proxy for the wallet address, since the wallet address may be a long sequence of characters that is hard for the user to remember. The subset may be a combination of candidate portions of the genetic sequence of the user, for example, a combination of defined alleles. (column 8, line 15-67)
b. generating a first unique identifier from said IDI, whereby said first unique identifier is consistent despite variations in format, noise, or errors produced in said IDI (Abstract; Figure 1, 2; column 8, line 15-67, column 9, line 6-64, column 10, line 39-67, column 23, line 1-30, column 24, line 9-67, column 28, line 17-29, column 30, line 24-48);
Lidsky – The user is authenticated (when a match is identified between the IUT identifier stored on the blockchain, and a computed value (e.g., encrypted value, such as a hash) of a user provided password and the wallet address provided by the user…the unique password may be a user selected password and/or may be a private key linked to a public key of an electronic wallet stored on a wallet memory and/or a generated password. The private key and the public address of the wallet are associated with a wallet address. The wallet address may be associated with a unique name (optionally selected by the user, for example “John Doe 123”), where the unique name serves as a proxy for the wallet address, (column 8, line 15-67)
c. retrieving a second unique identifier associated with a non-fungible token (NFT) wherein said NFT is held in a crypto wallet, wherein the individual has authorized access to said crypto wallet and said NFT contains encrypted identity metadata; and (Abstract; Figure 2; column 8, line 15-67, column 16, line 36-67, column 23, line 44-49, column 28, line 56-65, column 31, line 45-67); and
Lidsky – The IUT storing the IUT identifier is implemented as a non-fungible token (NFT). NFTs are unique cryptographic assets that each represent a non-interchangeable token. … An IUT identifier is an outcome (e.g., result of a computation) of an encryption (optionally hashing) of an encrypted (optionally hashed) subset of the digital representation of the genetic sequence of the user and a unique password of the user. The unique password may be a user selected password and/or may be a private key linked to a public key of an electronic wallet stored on a wallet memory and/or a generated password…. Alternatively or additionally, the IUT (and/or IUT identifier) is stored in the electronic wallet of the user according to the wallet address. (column 8, line 15-67, column 23, line 44-49)
d. applying at least one deterministic rule on both said first unique identifier and said second unique identifier, thereby deciding whether they are correlated; whereby deciding whether said individual is identified based on the deterministic result of said rule applied on said unique identifiers (Abstract; Figure 2, 9; column 8, line 15-67, column 25, line 16-65, column 39, line 2-21).
Lidsky – The user is authenticated (when a match is identified between the IUT identifier stored on the blockchain, and a computed value (e.g., encrypted value, such as a hash) of a user provided password and the wallet address provided by the user. The match may be computed by smart contract code associated with a blockchain dataset in communication with the network. The match may be triggered, for example, by an authentication server such as for authentication of a user for accessing an application and/or sensitive data, by an application which may be stored on an application server for access by the user, and/or by the user via a client terminal such as within a session. The user provided wallet address (which may be provided via a user provided unique name that corresponds to the wallet address) may denote the address of the defined cryptographic non-fungible IUT stored on the blockchain, where the IUT stores the IUT identifier. (column 8, line 15-67)
Lidsky discloses hashing, Lidsky does not disclose using a deterministic, non-reversible transformation mechanism.
Lablans teaches using a deterministic, non-reversible transformation mechanism (Abstract; column 3, line 49-61, column 31, line 62-67).
Lablans – But the corresponding n-state switching operations are meaningful as they process signals in a deterministic and often invertible way that is useful in cryptographic computers… Hashing in general refers to a (usually non-reversible and one way) transformation process, for instance to indicate a possible change in status, hashing can be achieved via a finite field. (column 3, line 49-61, column 31, line 62-67)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Lidsky and Lablans in order to provide a sufficient level of security to a user (Lablans; column 1, line 38-62)
Regarding claim 2, Lidsky discloses wherein said deterministic rule is selected from the group consisting of an arithmetic rule, a logical rule, a rule involves a cryptographic algorithm, a string- manipulation rule, and a matching rule (column 15, line 62-67, column 16, line 1-10, column 28, line 56-64).
Regarding claim 3, Lidsky discloses wherein said NFT is an identification (ID) token (Abstract; Figure 2; column 8, line 15-67, column 16, line 36-67, column 23, line 44-49, column 28, line 56-65, column 31, line 45-67).
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lidsky (US 10,673,847) (“Lidsky”), in view of Lablans (US 11,093,213) (“Lablans”)and further in view of Ebrahimi et al. (US 10,498,542) (“Ebrahimi”).
Regarding claim 4, neither Lidsky nor Lablans discloses wherein the step of generating comprises: a. arranging said IDI in at least one set of ordered-strings, according to at least one set of arranging rules, wherein said set of ordered-strings contains at least one ordered-string; b. formatting each string in said set of strings, according to a set of formatting rules; and c. applying a deterministic algorithm on each member of said set of ordered-strings in a specific order wherein said order defined by said set of arranging rules; whereby a unique and deterministic value is computed from said IDI without being impacted by variations in the format or redundancy in said IDI. Ebrahimi teaches wherein the step of generating comprises: a. arranging said IDI in at least one set of ordered-strings, according to at least one set of arranging rules, wherein said set of ordered-strings contains at least one ordered-string; b. formatting each string in said set of strings, according to a set of formatting rules; and c. applying a deterministic algorithm on each member of said set of ordered-strings in a specific order wherein said order defined by said set of arranging rules; whereby a unique and deterministic value is computed from said IDI without being impacted by variations in the format or redundancy in said IDI (Figure 1C, 3A, D, 4A, 5, 8; column 9, line 19-41, column 19, line 30-61, column 20, line 1-67). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Lidsky, Lablans and Ebrahimi in order to manage user identification and authentication securely (Ebrahimi; column 1, line 25-47).
Regarding claim 5, Ebrahimi teaches wherein said set of arranging rules comprises a. at least one identification(ID) type number, b. at table, mapping a set of fields of IDI to a series of numbers, c. a filtering rule, filtering and keeping needed fields of the IDI from said set of fields of IDI, based on the value of said IDI type of number, and d. an ordering rule putting said needed fields of IDI in an order, whereby all needed fields of IDI, and their order, are decided, based on said ID type number (Figure 1C, 3A, D, 4A, 5, 8; column 6, line 2-49, column 9, line 19-67, column 13, line 1-65, column 16, line 22-60, column 19, line 30-61, column 20, line 1-67).
Regarding claim 6, Ebrahimi teaches wherein said set of formatting rules comprises: a. a rule to decide a delimiter, b. a rule to decide a filler, c. a rule to filter characters, and d. a rule to convert characters, whereby all strings in said set of ordered-strings are normalized and/or formalized (Figure 1C, 3A, D, 4A, 5, 8; column 9, line 19-41, column 13, line 1-65, column 19, line 30-61, column 20, line 1-67).
Regarding claim 7, Ebrahimi teaches wherein said deterministic algorithm comprises: a. applying a cryptographic hash algorithm on the first string in said set of ordered-strings; thereby a first hash is generated; b. concatenating the next string in said set of ordered-strings to said first hash; thereby an intermediary string is formed; and c. repeating said applying step on said intermediary string and concatenating until there is no string left in said set of ordered-strings to concatenate, thereby the hash resulted from the applying step on the final intermediary string is a final hash; whereby said final hash is unique, deterministic, and fixed-length (Figure 1C, 3A, D, 4A, 5, 8; column 6, line 2-17, column 15, line 1-65, column 16, line 1-64, column 17, line 1-53, column 20, line 25-67).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Martinez (US 20220318233) teaches a user identifier that is associated with and NFT with an assigned wallet.
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.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3699