DETAILED ACTION
The present application, filed on 5/4/2023 is being examined under the AIA first inventor to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/29/2025 has been entered.
The following is a non-final Office Action on the Merits in response to Applicant’s submission.
a. Claims 1-2, 9-12, 19-20 are amended
Overall, Claims 1-20 are pending and have been considered below.
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 8/2/2024; 8/5/2025; 12/15/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, such IDS is being considered by Examiner.
Claim Rejections - 35 USC § 101
35 USC 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 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-10 are directed to a computer implemented method, and claims 11-20 are directed to a system.
Thus, on its face, each such independent claim and the therefrom dependent claims are directed to a statutory category of invention.
Per Step 2A.1 Claim 1, (which is repeated in Claims 11) is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claims 1, 11 recite an abstract idea, shown in bold here below, as well as additional claim elements (not bolded):
[A] A computer-implemented method for electronic order processing:
[B] detecting that a portable electronic device associated with a user is located within a proximity zone of a reader device associated with a merchant;
[C] wirelessly receiving an identification code from the portable electronic device within the proximity zone of the reader device and authenticating the portable electronic device based on the identification code;
[D] responsive to authenticating the portable electronic device, wirelessly receiving a hash representing biometric information of a valid biometric profile and a purchase log of the user associated with the merchant from the secure memory of the portable electronic device within the proximity zone of the reader device;
[E] automatically acquiring, by the reader device, a biometric input from the user associated with the portable electronic device; and
[F] wirelessly sending the biometric input to the portable electronic device within the proximity zone of the reader device;
[G] wirelessly receiving, from the portable electronic device within the proximity zone of the reader device, a hash of the biometric input computed by the portable electronic device;
[H] performing a biometric authentication by computing the user associated with the portable electronic device by comparing the hash of the acquired biometric input against the hash representing the biometric information of the valid biometric profile;
[I] responsive to the biometric authentication performing by comparing the computed hash of the acquired biometric input against the hash representing the complete biometric information of the valid biometric profile being successful, automatically identifying a favorite order associated with the user and fulfilling the favorite order at the merchant based on the purchase log.
[J] responsive to the biometric authentication of the user associated with the portable electronic device by comparing the hash of the biometric input matching the hash representing the biometric information of the valid biometric profile,
[K] automatically identifying a favorite order of the user and fulfilling the favorite order at the merchant based on the purchase log,
[L] responsive to the biometric authentication of the user associated with the portable electronic device being unsuccessful based on the hash of the biometric input failing to match the hash representing the biometric information of the valid biometric profile, sending a signal to the portable electronic device within the proximity zone of the reader device to deactivate itself.
Claim 1 (which is repeated in claim 11) recites: performing a biometric authentication and identifying a favorite order (limitations H, I), matching the biometric profile with a with a valid biometric profile and identifying a favorite order (limitations J, K), and in case there is no match, blocking the transaction (limitation L), which, based on the claim language and in view of the application specification, represents a process aimed at: “providing orders to previously authenticated users and not providing an order if authentication fails”.
This is a combination that, under its broadest reasonable interpretation, covers agreements in form of sales activities or behaviors, i.e. e-commerce, which falls under Certain Methods of Organizing Human Activity – Commercial or Legal Interactions.
Accordingly, claim 1 (which is repeated in claims 11) recites an abstract idea
[ADDITITONAL ELEMENTS]
Per Step 2A.2 The identified abstract idea is not integrated into a practical application because the additional elements in the claim only amount to instructions to apply the judicial exception to a computer, or to a general link to a technological environment (see MPEP 2106.05(h); MPEP 2106.05(f)).
For example, the additional elements “a processor,” and “a memory” recite computing elements at a high level of generality, which is equivalent to instructions to implement the abstract idea “by a computer” or “on a computer.”
The conditionality statements “responsive to detecting that the portable electronic device associated with the user is located within the proximity zone of the reader device associated with the merchant”; “responsive to authenticating the portable electronic device”; “responsive to the biometric authentication of the biometric input against the valid biometric profile being successful” as applied to the respective steps, are further conditioning the execution of the subsequent steps to be performed.
The conditional statements do not preclude from carrying out the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”.
Therefore, those conditioning elements do not serve to integrate the identified abstract idea into a practical application.
[ADDITIONAL STEPS]
The additional claim elements also recite: detecting that a portable electronic device associated with a user is located within a proximity zone of a reader device associated with a merchant; wirelessly receiving an identification code from the portable electronic device within the proximity zone of the reader device and authenticating the portable electronic device based on the identification code; responsive to authenticating the portable electronic device, wirelessly receiving a hash representing biometric information of a valid biometric profile and a purchase log of the user associated with the merchant from the secure memory of the portable electronic device within the proximity zone of the reader device; automatically acquiring, by the reader device, a biometric input from the user associated with the portable electronic device; and wirelessly sending the biometric input to the portable electronic device within the proximity zone of the reader device; wirelessly receiving, from the portable electronic device within the proximity zone of the reader device, a hash of the biometric input computed by the portable electronic device; (limitations B, C, D, E, F, G). When considered individually, they amount to nothing more than reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
Therefore, the additional elements of claim 1 (which is repeated in claims 11) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B Claim 1 (which is repeated in claims 11) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the claim is reevaluated as a whole, as a combination under the considerations of Step 2B, the outcome is the same like in Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing about the computing environment or the additional steps (limitations B-C), that is significant or meaningful to the underlying abstract idea because the identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”) could have been reasonably performed when provided with the relevant data and/or information.
Therefore, it is concluded that independent claims 1, 11 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claims 3-5, 7, which are repeated in claims 13-15, 17, respectively, further recite:
wherein the customer profile information includes one or more of a customer name, a customer picture, a first list of frequently visited merchants, a second list of favorite orders associated with each of the frequently visited merchants, an address, and a telephone number
wherein the identification code uniquely associates the portable electronic device with the user
wherein the identification code uniquely identifies the portable electronic device
wherein the biometric input is automatically acquired using at least one from a group of a fingerprint scan, a retinal scan, an iris scan, a facial scan, a palm scan, a DNA analysis, a signature analysis, and a voice analysis
wherein the order associated with the user is a favorite order
These additional elements in the dependent claims only limit other claim elements, like customer profile information; identification code; biometric input; order, by describing their nature, structure and/or content, thus further limiting the form of the transactions that are acted upon in the independent claims. The nature, form or structure of these elements themselves do not provide more than a general link to a technological environment and do not practically or significantly alter how the identified abstract idea would be performed.
Moreover, under the broadest reasonable interpretation, the additional elements in dependent claims 3-5, 7-8, which are repeated in claims 13-15, 17-18, respectively, do not perform any claimed method steps and are not part of the claimed system. They are outside the scope of the claimed invention and, as such, cannot integrate the identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”) into a practical application because they are not significantly more.
Therefore, claims 3-5, 7-8, which are repeated in claims 13-15, 17-18, respectively, are deemed ineligible.
Dependent claim 2, which is repeated in claims 12, further recites:
[A] A computer-implemented method for electronic order processing:
[B] responsive to the biometric authentication of the user associated with the portable electronic device being successful based on the hash of the biometric input matching the hash representing the biometric information of the valid biometric profile, wirelessly receiving a customer profile information and payment information associated with the user from the portable electronic device.
When considered individually, these additional claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”. Further additional elements in this dependent claim are comparable to reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
The additional elements in these dependent claims are similar to the additional elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 2 (which is repeated in claims 12) is deemed ineligible.
Dependent claim 6, which is repeated in claims 16, further recites:
[A] A computer-implemented method for electronic order processing:
[B] responsive to detecting that the portable electronic device associated with the user is located within the proximity zone of the reader device associated with the merchant, sending a request for the hash representing the complete biometric information of the valid biometric profile of the user
[C] wirelessly receiving the hash representing the complete biometric information of the valid biometric profile of the user from the portable electronic device over a secure communication channel.
When considered individually, these additional claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”. Further additional elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims (see MPEP 2106.05(d) II).
The additional elements in these dependent claims are similar to the additional elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 6 (which is repeated in claims 16) is deemed ineligible.
Dependent claim 8, which is repeated in claims 18, further recites:
[A] A computer-implemented method for electronic order processing:
[B] processing rewards based on the fulfilling the favorite order at the merchant.
When considered individually, these additional claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”. Further additional elements in this dependent claim are comparable to reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
The additional elements in these dependent claims are similar to the additional elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 8 (which is repeated in claims 18) is deemed ineligible.
Dependent claim 9, which is repeated in claims 19, further recites:
[A] A computer-implemented method for electronic order processing:
[B] retrieving a list of favorite orders associated with the user during past visits to the merchant;
[C] displaying the list of favorite orders;
[D] receiving a selection of the favorite order from the list of favorite orders;
When considered individually, these additional claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”. Further additional elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data” “sorting information” i.e. comparing data, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims (see MPEP 2106.05(d) II).
The additional elements in these dependent claims are similar to the additional elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 9 (which is repeated in claims 19) is deemed ineligible.
Dependent claim 10, which is repeated in claims 20, further recites:
[A] A computer-implemented method for electronic order processing:
[B] retrieving multiple methods of payment associated with the user;
[C] displaying the multiple methods of payment;
[D] receiving a selection of a payment method from the multiple methods of payment.
When considered individually, these additional claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: “providing orders to previously authenticated users and not providing an order if authentication fails”. Further additional elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data” “sorting information” i.e. comparing data, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims (see MPEP 2106.05(d) II).
The additional elements in these dependent claims are similar to the additional elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (“providing orders to previously authenticated users and not providing an order if authentication fails”). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 10 (which is repeated in claims 20) is deemed ineligible.
In addition, the claims in the instant application do not constitute significantly more also because the computing claim elements only serve to implement the abstract idea on a computing environment (see Enfish, see MPEP 2106.05(a)). For this purpose, the computing system encompasses general purpose hardware and software modules, as disclosed in the application specification in fig5A, fig5B and [0093]-[0099], including among others: processor; memory; display; network adapter; reader; pointing device; keyboard; storage device.
When the dependent claims are considered as a whole, as a combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense, i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. Overall, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more. (see MPEP 2106.05)
In sum, Claims 1-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20080046366 A1 Bemmel; Vincent et al. METHOD AND SYSTEM FOR PROVIDING BIOMETRIC AUTHENTICATION AT A POINT-OF-SALE VIA A MOBILE DEVICE - A system and method is provided for authorizing a payment for a point of sale transaction by authenticating the user of a mobile device, such as a mobile phone. The present invention authenticates the consumer and verifies that he is authorized to conduct a transaction at the point of sale by means of the consumer's mobile device.
US 20060245620 A1 Roques; Serge et al. Method and device for verification of identity aboard an aircraft - A method and device for verification of identity aboard an aircraft combines a device for biometric authentication with a surveillance device making it possible to control the conditions under which biometric authentication is performed. According to complementary stages of the method of the invention, a communication device can communicate information relating to the verification of identity and whereby a state of alert is activated if the information signals an unusual situation aboard the aircraft.
US 20040123107 A1 Miyazaki, Kunihiko et al. Method for verifying a digital signature - method for signature verification having a structure that reflects reliability of a signature history properly for a hysteresis signature used for verification based on the signature history. A method for arbitration and an arbitrator apparatus solve a dispute on correctness of a signature based on the method for verification. Furthermore, a method for managing history to migrate the management burden on a signer. Reliability is set on a signature issuing record that is a component of a signature history, reliability of the signature history is calculated based on the set reliability, and the calculated reliability is output as reliability of a verification result. The disclosure also provides a method for verification that reflects the reliability of a signature history properly and a method for arbitration and an arbitrator apparatus that solve a dispute on correctness of a signature. Furthermore, a signature history storage service apparatus mitigates the signature history storage burden on a signer.
US 20090307764 A1 Isobe; Yoshiaki et al. Biometric Authentication System and Method with Vulnerability Verification - A biometric authentication device has a threat of an attack of pretending to be someone else by such as forgery. The present invention supports a service provider to appropriately decide the level of such threat. A vulnerability verification server 150 is provided in the system, and the vulnerability of each biometric product is centrally managed. A service provider 130 sends the information that specifies the device in which a client terminal 110 executes the biometric authentication to the vulnerability verification server 150, and receives the vulnerability information. The service provider 130 decides whether the service can be provided or not to the client terminal 110 using the vulnerability information that was received.
US 20020138768 A1 Murakami, Rick V. et al. Method for biometric authentication through layering biometric traits - A portable biometric authentication system having a single technology for measuring multiple, varied biological traits to provide individual authentication based on a combination of biological traits. At least one of these biometric traits is a live physiological trait, such as a heartbeat waveform, that is substantially-but not necessarily completely-unique to the population of individuals. Preferably, at least one of the identifying aspects of the biological traits is derived from a measurement taken by reflecting light off of the subdermal layers of skin tissue.
US 6052468 A Hillhouse; Robert D. Method of securing a cryptographic key - A method is disclosed for improving portability of secure encryption key data files. The method provides for re-securing key data files according to different security processes for mobility. For porting an encryption key secured using a fingerprint authentication process to a system having only a password authentication process, a user selects password authentication process, provides a fingerprint and is authorized, provides a new password and then the encryption key is accessed according to the fingerprint authentication process and secured according to the password authentication process. This allows the use of specialized security hardware at one location while retaining an ability to transport encryption keys in a secure fashion to other locations, which do not have similar security hardware.
US 20060080549 A1 Okamura; Sagiri et al. Biometric authentication device and terminal In a biometric authentication device that includes biometric-authentication-data generating means for generating biometric authentication data from biometric data of a user, and authentication means for performing authentication of the biometric authentication data on the basis of reference biometric data of the user, a matching ratio of the reference biometric data and updated and registered second reference biometric data is calculated, and the user is requested to re-register the reference biometric data and the second reference biometric data when the matching ratio is lower than a predetermined threshold value.
US 20080056544 A1 Aikawa; Makoto et al. Biometric Authentication Apparatus, Biometric Authentication System, IC Card and Biometric Authentication Method A biometric authentication apparatus for identifying a subject person by using biometric information of a user has memories and a processing unit for performing biometric authentication. The memories and store a remaining trial number whose value is reduced each time biometric authentication fails. The processing unit generates a lower limit value smaller than the remaining trial number at the start of biometric authentication, performs biometric authentication until the reduced remaining trial number becomes equal to or smaller than the lower limit value, and generate alarm data for issuing alarm to the user when the reduced trial number becomes equal to or smaller than the lower limit value.
US 20080159599 A1 Kajihara; Junji et al. Biometric authentication system and biometrics authentication method A biometrics authentication system capable of easily performing biometrics authentication is provided. A biometrics authentication system includes: a microlens array section including a plurality of microlenses; an image pickup device for receiving light condensed by each microlens in the microlens array section from each different part of a living organism to obtain image pickup data of each part; an image processing section for producing a single image pickup data of the living organism on the basis of the image pickup data of each part captured by the image pickup device; and an authentication section for performing at least vein authentication using a vein of the living organism on the basis of the single image pickup data captured by the image processing section.
US 20030115473 A1 Sugimura, Masahiko et al. Biometrics authentication system and method A biometrics authentication method includes: conducting authentication of a user by a method other than biometrics authentication; registering and storing biometrics data regarding a user; determining whether or not biometrics authentication can be conducted by referring to stored biometrics data; conducting biometrics authentication; and outputting an authentication result as to whether the user is authenticated, wherein biometrics data on the user is registered and stored only in the case where the user is authenticated by the method other than the biometrics authentication, and biometrics authentication is conducted only in the case where it is determined that biometrics authentication can be conducted.
US 20080077359 A1 Ito; Kimikazu Biometric authentication device In a biometric authentication device that includes biometric-authentication-data generating means for generating biometric authentication data from biometric data of a user, and authentication means for performing authentication of the biometric authentication data on the basis of reference biometric data of the user, a matching ratio of the reference biometric data and updated and registered second reference biometric data is calculated, and the user is requested to re-register the reference biometric data and the second reference biometric data when the matching ratio is lower than a predetermined threshold value.
US 20100008545 A1 Ueki; Hironori et al. BIOMETRICS AUTHENTICATION DEVICE AND PORTABLE TERMINAL Provided is a biometric authentication device for identifying an individual based on a biometric pattern of the subject included in a picked up image, comprising: a light guiding unit for outputting light from a surface thereof; a liquid crystal display (LCD) unit for adjusting, on a display pixel basis, an intensity of light output from the surface of the light guiding unit; an image pickup unit for picking up an image of the subject; a display light source for emitting light used as a backlight of the LCD unit; a detection light source for emitting light for irradiating the subject; and a control unit for controlling processing of the biometric authentication device The control unit turns on the detection light when the image pickup unit picks up a first image, which is used for authentication, and turns on the display light source when the LCD unit displays information.
US 20080211627 A1 Shinzaki; Takashi BIOMETRIC AUTHENTICATION METHOD AND BIOMETRIC AUTHENTICATION APPARATUS According to an aspect of an embodiment, a method comprises, storing information corresponding to a plurality of users in association with first reference biometric data and second reference biometric data, the users being divided into first and second groups, the quality of the first reference biometric data of each of the users in the first group being not less than a predetermined level, the quality of the first reference biometric data of each of the users in the second group being less than the predetermined level, obtaining first biometric data of a user by inputting first biometric information of the user, providing first authentication, obtaining second biometric data of a user by inputting second biometric information of the user when the first authentication indicates presumed matching of the first biometric data with the first biometric reference data of one of the users in the second group and providing second authentication.
US 20070003111 A1 Awatsu; Kiyotaka et al. Biometrics authentication method and biometrics authentication system A biometrics authentication system uses biometrics authentication media to simplify the process of issuing biometrics authentication media, and reduce issuing costs. A biometrics authentication application is downloaded from a server to a mobile communication terminal, and an area for authenticated biometrics information is created. A user brings this mobile communication terminal to a service area and causes an image of his own biometrics information to be captured, and this biometrics data and an account number are stored in a common area of the mobile communication terminal. By this means, the mobile communication terminal has functions of an individual card storing biometrics information, and issuing of a card for use in biometrics authentication is completed.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions.
Examiner respectfully disagrees.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “Applicant respectfully submits a table below that shows reasonable similarity between the pending claim 1 and the hypothetical claim 3 of USPTO Example 35 published by the Office in conjunction with 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), where claim 3 is considered to recite patent eligible subject matter.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a particular Example from the Office published material and use the specific arguments from that Example to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter claimed in that particular Example, which in the instant situation it does not. The Office periodically publishes Examples with detailed analyses only to serve as rational and argumentation models to determine eligibility. Each application has to be considered on its own merits. Examples provided by the Office are nothing more than the name suggests: EXAMPLES, that are to be considered or not, as they are neither laws, nor rules, nor regulations.
While the instant application is directed to “Automated Service-Based Order Processing”, Example 35 is directed to “Verifying a Bank Customer Identity to permit an ATM Transaction.” It is evident that the facts drawn in the two documents are neither identical nor similar. The fact that both documents are directed to authenticating a customer, albeit utilizing different techniques, does not amount to “similar legal issues.”
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that the Office has also failed to 'properly' analyze the claim as a whole to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the alleged abstract idea.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant Office Action concludes at Step 2B:
Per Step 2B Claim 1 (which is repeated in claims 11) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the claim is reevaluated as a whole, as a combination under the considerations of Step 2B, the outcome is the same like in Step 2A.2.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that when the amended claim is analyzed as a whole, the combination of elements … operate in a non-conventional and non-generic way to ensure that the user of the portable electronic device is biometrically authenticated in a secure manner that is more than the conventional authentication employed by a reader device alone. Thus, like in BASCOM Global Internet v. AT&T Mobility LLC, 119 USPQ2d 1236 (Fed Cir. 2016), the claimed combination of additional elements presents a specific, discrete implementation of the alleged abstract idea.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, it is not proper practice to go and find a single Court decision and use the general arguments from that decision to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Second, biometric authentication is “well-understood, routine and conventional in the art (see US 2006/0080549 to Okamura; US 20080056544 to Aikawa). The biometric authentication method is utilized in the most conventional way possible, i.e., to identify a person.
Thus, the rejection is proper and has been maintained.
Applicant submits “In combination, these steps do not amount to merely "instructions to apply the abstract idea on a computer," but instead set up a sequence of specific device-to-device coordination and interaction within a proximity zone that addresses unique problems associated with portable electronic devices and point of sale devices at a merchant.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The invoked “sequence of specific device-to-device coordination and interaction’ is “well-understood, routine and conventional in the art (see US 2006/0080549 to Okamura; US 20080056544 to Aikawa).
Thus, the rejection is proper and has been maintained.
Applicant submits “The combination of elements represent significantly more (i.e., provide an inventive concept) because they specifically address a technological problem of spoofing and are a practical implementation of the alleged abstract idea of preventing fraudulent use of personal user devices that performs biometric authentication in a non-conventional and non-generic way similar to the unconventional sequence of events in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It appears that Applicant refers to Step 2B of the eligibility analysis. At this step, the eligibility analysis in the instant Office Action concludes:
When the dependent claims are considered as a whole, as a combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense, i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. Overall, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that the operations described in the claims meaningfully reflect at least the above noted improvements.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It appears that Applicant refers to the provisions of MPEP 2106.05(a).
MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
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/Radu Andrei/
Primary Examiner, AU 3698