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 .
Status of the Application
Claims 1 – 20 have been examined in this application. This communication is the first action on the merits.
The filing date of the above referenced application is March 9, 2023. The Application Data Sheet filed on March 9, 2023, does not make claim for domestic benefit/national stage continuity. The Information Disclosure Statements filed on March 9, 2023, and September 9, 2024, have been acknowledged.
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 – 20 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.
Claim 1 is 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. Claim 1 is directed to an abstract idea, Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 1 recites, in part, a system for performing a transaction by transmitting an authentication request, opening a communication field, receiving an authentication credential, validating the authentication request, and performing a transaction. The limitations of transmitting an authentication request, opening a communication, receiving a credential, validating the authentication request and performing a transaction are directed to concepts of organizing human activity via the use of generic computer components. Hence, it falls within the “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of a card, a user device, a server and a processor, to perform operations. The general computer operations are recited as such, that it amounts to no more than mere instruction to apply the exception using generic computer components. Specification paragraphs 26 – 52 and 127 additionally reference general purpose computing systems and environments, with the recitation of the computer limitations amounting to mere instructions to implement the abstract idea on a computer. According, the additional elements do 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.
Next the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure the claim amounts to significantly more than an abstract idea. Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional elements associated with performing operations amount to no more than mere instructions to apply the exception using generic computer components. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Claims 2 – 7 are dependent from Claim 1, and do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 2 – 7 also do not identify improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). Given the above reasons, generic computing components associated with transmitting an authentication request, opening a communication, receiving a credential, validating the authentication request and performing a transaction is not an inventive concept.
Independent process Claim 8 and independent product Claim 17 are directed to an abstract idea as the Federal Circuit has held that an extended claim by claim analysis is not necessary where multiple claims are “substantially similar and linked to the same abstract idea.” In this case, Claims 8 and 17 are substantially similar to system Claim 1.
Claims 9 – 16 and 18 – 20 dependent from Claims 8 and 17, do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 9 – 16 and 18 – 20 also do not identify improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). Given the above reasons, generic computing components associated with transmitting an authentication request, opening a communication, receiving a credential, validating the authentication request and performing a transaction is not an inventive concept.
Therefore, Claims 1 – 20 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 20 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. Claims 1 – 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osborn et al., U.S. 10,489,781.
As per Claim 1,
Osborn discloses a system for validating a user’s identity, the system comprising:
a card; (Osborn c.10 l.19-43 and Fig 3 read on a card.)
a user device; and (Osborn c.10 l.19-60 and Fig 3 read on a user device.)
a server, the server further comprising:
a memory, and
a processor configured to: (Osborn c.5 l.25-32, c.6 l.41-55, c.12 l.49-57 and Figs 1A,2,3 read on a server with memory and processor.)
transmit an authentication request to the user device, the authentication request further comprising a uniform resource locator (URL); (Osborn c.6 l.9-64, and Fig 2 read on authentication communications among devices inclusive of a uniform resource indicator.)
open, in response to the authentication request, a communication field between the user device and the card; (Osborn c.5 l.25-47, c.6 l.9-64, and Fig 2 read on authentication communications among devices inclusive of a card and user device communication field.)
receive an authentication credential from the card; validate the authentication request; and (Osborn c.5 l.25 through c.6 l.62, and Figs 1B,2 read on authentication communications among devices inclusive of authentication credentials from a card.)
perform a transaction. (Osborn c.35 l.1-4 and l.55-60 and Fig 14 read on performing a transaction.)
As per Claim 2,
Osborn discloses the system of claim 1, wherein the user device is at least one selected from the group of a smart phone, tablet, or computer. (Osborn c.4 l.1-39 and Fig 1 read on a user device including a computer.)
As per Claim 3,
Osborn discloses the system of claim 1, wherein the authentication request is sent in a short message service (SMS). (Osborn c.33 l.11-29, c.35. l.13-21 and Figs 13,14 read on system communications subject to SMS.)
As per Claim 4,
Osborn discloses the system of claim 1, wherein the processor is further configured to direct the user device to a website associated with the URL. (Osborn c.6 l.9-64, c.34 l.5-55 and Figs 2,13,14 read on communications among devices inclusive of transactions associated with websites.)
As per Claim 5,
Osborn discloses the system of claim 1, wherein the processor is further configured to direct the user device to a mobile application associated with the URL. (Osborn c.5 l.33 through 6 l.64, and Figs 1B,2 read on authentication communications among devices inclusive of applications operations and a uniform resource identifier.)
As per Claim 6,
Osborn discloses the system of claim 1, wherein the communication field is at least one selected from the group of near field communication (NFC), Bluetooth, or radio frequency identification (RFID). (Osborn c.5 l.25-47, c.6 l.9-64, and Fig 2 read on authentication communications among devices inclusive of a card and user device communication field subject to NFC.)
As per Claim 7,
Osborn discloses the system of claim 1, wherein the transaction is financial transaction through at ATM or banking institution. (Osborn c.34 l.13-36, c.35 l.1-4 and l.55-60 and Figs 13,14 read on transactions through a banking system.)
As per Claim 8,
The Examiner notes that Claim 8 reads as follows:
A method for validating a user’s identity, the method comprising the steps of:
transmitting, by a processor, an authentication request to a user device, the authentication request further comprising a uniform resource locator (URL);
directing, by a processor, the user device to an application;
opening a communication field between a user device and a card;
receiving, by a processor, an authentication credential from the card;
validating the authentication request; and
performing a transaction.
Claim 8 is directed to the method implied by the system of Claims 1 and 5, and is therefore rejected on the same rationale as Claims 1 and 5.
As per Claim 9,
The Examiner notes that Claim 9 reads as follows:
The method of claim 8, wherein the user device is at least one selected from the group of a smart phone, tablet, or computer.
Claim 9 is directed to the method implied by the system of Claims 1, 2 and 5, and is therefore rejected on the same rationale as Claims 1, 2 and 5.
As per Claim 10,
Osborn discloses the method of claim 8, wherein the authentication request is sent in a multimedia message service (MMS). (Osborn c.4 l.55-65, c.7 l.58 through c.8. l.7, c.11 l.22-43 and Figs 1A,2,3 read on communications via MMS.)
As per Claim 11,
Osborn discloses the method of claim 8, wherein the user device is a smart watch. (Osborn c.4 l.1-14, c.10 l.44-60, c.32 l.55-67 and Figs 1A,3,13 read on a smart watch as a smartphone or like wearable mobile device.)
As per Claim 12,
Osborn discloses the method of claim 8, where the transaction is a secure access transaction for entering a living space or abode. (Osborn c.4 l.1-14, c.10 l.44-60, c.32 l.55-67 and Figs 1A,3,13 read on communications with any network enabled computer device, inclusive of home appliances.)
As per Claim 13,
Osborn discloses the method of claim 8, wherein the transaction is a secure access transaction for opening one or more secure storage spaces. (Osborn c.4 l.1-14, c.5 l.5-24, c.10 l.44-60, c.32 l.55-67, c.33 l.30-50 and Figs 1A,2,3,13 read on communications with network enabled computer devices, inclusive of any service providers’ network.)
As per Claim 14,
Osborn discloses the method of claim 8, wherein the authentication credential is a digital signature from the card. (Osborn c.5 l.25 through c.6 l.62, and Figs 1B,2 read on authentication communications among devices and authentication credentials from a card inclusive of a digital signature.)
As per Claim 15,
Osborn discloses the method of claim 8, wherein the authentication request and authentication credential are transmitted and received through an application protocol data unit (APDU). (Osborn c.18 l.10-31 read on communications through an application protocol data unit.)
As per Claim 16,
Osborn discloses the method of claim 8, wherein the method further comprises, before the final step of performing a transaction, the additional steps of:
transmitting, over the processor, a one-time password (OTP) to the user device; (Osborn c.17 l.6-35, c.18 l9 l.44-57 and Figs 5,6,8 read on communication exchanges subject to a one-time password.)
receiving, over the processor, a passcode from the user device; (see Osborn c.5 l.25 through c.6 l.62, and Figs 1B,2 referenced above in Claim 1.)
validating the user; and (id. Osborn, directly above.)
performing a transaction. (Osborn c.35 l.1-4 and l.55-60 and Fig 14 read on performing a transaction.)
As per Claim 17,
The Examiner notes that Claim 17 reads as follows:
A computer-accessible non-transitory medium comprising computer executable instructions that, when executed on a processor, perform procedures comprising the steps of:
transmitting, by a processor, an authentication request to a user device, the authentication request further comprising a uniform resource locator (URL);
directing, by a processor, the user device to an application;
opening a communication field between a user device and a card;
receiving, by a processor, an authentication credential from the card;
validating the user device; and
performing a transaction.
Claim 17 is directed to the product implied by the method of Claim 8, and is therefore rejected on the same rationale as Claim 8.
As per Claim 18,
The Examiner notes that Claim 18 reads as follows:
The computer-accessible non-transitory medium of claim 17, wherein the user device is at least one selected from the group of a smart phone, tablet, or computer.
Claim 18 is directed to the product implied by the method of Claim 9, and is therefore rejected on the same rationale as Claim 9.
As per Claim 19,
The Examiner notes that Claim 19 reads as follows:
The computer-accessible non-transitory medium of claim 17, wherein the user device is an automated teller machine (ATM).
Claim 19 is directed to the product implied by the method of Claim 8 and the system of Claim 7, and is therefore rejected on the same rationale as Claims 8 and 7.
As per Claim 20,
The Examiner notes that Claim 20 reads as follows:
The computer-accessible non-transitory medium of claim 17, wherein the steps further comprise transmitting the authentication request by a short message service (SMS) or a multimedia message service (MMS).
Claim 20 is directed to the product implied by the method of Claims 8 and 10, and the system of Claim 3, and is therefore rejected on the same rationale as Claims 8, 10 and 3.
Conclusion
Art cited but not relied upon pertinent to application disclosure includes Rule et al., U.S. 10,771,254 generally identifying contactless card systems and communications; Mitra et al., U.S. 2016/0267486 generally identifying smartcards, user devices and network communications; and Zarakas et al., U.S. 2017/0154328 generally identifying dynamic transaction cards, user devices and network communications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin Brindley, whose telephone number is (571) 272-7335. The examiner can normally be reached on Monday and Tuesday between 6:00 AM and 3:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Christine Behncke, can be reached at (571) 272-8103. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Applicants are invited to contact the Office to schedule an interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/BENJAMIN S BRINDLEY/Primary Examiner, Art Unit 3695 August 28, 2025
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