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 .
Claim Rejections - 35 USC § 112
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 1-3, 5-6, 8-10, 12-14, and 16-20 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.
Claims 1, 8, and 14 recites “public-key pair” but later recite a “private key” of the public-key pair, which renders the claim vague/ indefinite because a pair of public keys does not have a private key. The Examiner suggests clarifying language indicating there is also a private key with the public key. The dependent claims are rejected at least based on their dependency.
Appropriate correction is requested.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-6, 8-10, 12-14, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Starting with method claim 14, the claim is drawn to the abstract economic practice (organized human activity) steps of authenticating before accessing information. The claim(s) (14) recite(s) limitations drawn to two authentications such as establishing that a device is authenticated and then proper authentication process with the authenticated device. These authentications are performed using generic computer components performing generic computer steps. This judicial exception is not integrated into a practical application because it is merely being performed by applying the abstract idea into a generic computer environment. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations of a computer system, secure element, systems, biometric sensors, etc. are generic computer components being applied to the abstract idea (environment) and cannot integrate the abstract idea into a practical application.
Re claim 14, the “receiving” clause is routine data gathering as part of the abstract idea of authentication. The “generating” clause is part of the abstract idea of authenticating and/ or can be seen as math (encryption related) and/or organized human activity. The “issuing” and “receiving” clauses are routine data gathering as part of the abstract idea of authentication. The “storing” clause storing the biometric and index is further routine data gathering. The subsequent second authentication process involving collection, obtaining, accessing, signing and providing are drawn to routine data gathering, mental process/ math, routine data gathering such as returning matching data to provided data similar to concepts in Electric Power v. Alstom, the signing is routine data gathering similar to added data to collected data, and the providing of the information is merely data gathering and/ or insignificant post solution activity.
The Examiner notes that in cases involving authentication technology, patent eligibility often turns on whether the claims provide sufficient specificity to constitute an improvement to computer functionality itself. Similar to concepts discussed in Universal Secure Registry, the instant claims are directed to the abstract idea of obtaining verification of an identity to enable a transaction. In the instant claim 14, this is performed using keys and signing of data and indexes derived from biometric data. The use of security keys, signing, and biometric data recite conventional actions in a generic way and do not purport to improve any underlying technology. Though an authority system is recited, the Examiner nots that the use of a third party is itself an abstract idea and does not serve as an inventive concept (Alice, 573 U.S, at 219-20). The claims recite a collection of conventional data combined in a conventional way to achieve expected results, and thus are drawn to collecting and examining data to enable authentication. With respect to biometrics, the district court held that the claims are “directed to the abstract idea of secured verification of a person’s identity.” USR, 469 F. Supp. 3d at 238. It reasoned that the method steps disclosed do not recite “a technological solution but instead disclose an authentication method that is accomplished by retrieving and reviewing information, including biometric information, using a handheld device and a second device, to authenticate a user’s identification.” Id. at 238–39. Further, the district court explained that the specification does not disclose “a technological solution for obtaining, generating, or analyzing biometric information, which the patent defines generically as ‘any . . . method of identifying the person possessing the device.’” Id. at 239 (alteration in original) (quoting ’826 patent col. 4 ll. 27–32). The Examiner notes that the collection of biometric information to generate a first authentication information is not a specific technical solution but is instead routine data gathering. The Examiner notes that the use of signing/ keys is not an improvement to computer functionality, as it is merely a collection of conventional data combined in a conventional way that achieves only expected results. The Examiner notes that the claims do not recite a combination of additional elements to integrate into a practical application because there is no specific multistep encryption scheme recited, unlike example 41 of the 2019 Subject Matter Eligibility Examples. Thus the use of generic public/private key pairs does not integrate the abstract idea into a practical application. Indexing a value is not a practical application. The subsequent (second) authentication process again involves only routine collection of data, comparison of data to a third party, and displaying of results (providing), which again does not provide a practical application. Re claim 16, the limitations are drawn to storing data, which is routine data gathering. Claim 17 recites reading, which is abstract data processing steps of the authentication. Claim 18 merely specifies additional details of the abstract idea (specific types of data). Claim 19 is drawn to mental steps for comparison of acquired data to stored data. Claim 20 is details of the data, which is not significantly more to provide a practical application and does not specify specific details of how correspondence occurs, but nonetheless, linking data is not more than the abstract idea. Re claim 8, similar limitations have been discussed above re claim 14. The Examiner notes that restricting access is interpreted as organizing human activity, similar to that of Electric Power v. Alstom for comparing data and/ or authentication which is abstract. Re claim 9, the limtaitosn of a digital signature using a key and signing are drawn to abstract authentication steps, similar to as discussed above. Claim 10 recites limitations on the data, which is not a practical application but routine data gathering. Claim 12 and 13 are drawn to abstract limitations of the type of data and also routine data gathering and storing and comparing which are abstract data gathering steps. R claims 1-3 and 5-6, the limitations have been discussed above. Storing information is routine data gathering/ mental steps (pen and paper). Radio reading is routine data gathering using generic computer components.
Appropriate correction is requested.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. As this is a second non-final rejection, any delay is regretted.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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/DANIEL I WALSH/Primary Examiner, Art Unit 2876
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