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 .
In view of the interview conducted on March 5th, 2026, the examiner has hereby included the English translation and make this office action non-final.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: 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. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a mental process. For instance, the claim language “receive…the verifiable credential; and verify that the verifiable credential is valid” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “establish a decentralized identifier communication (DIDComm) protocol connection with a wallet application; send a request to the wallet application for a verifiable credential; fill at least one field of a web application with the at least one value specified by the verifiable credentials and update the web application to reflect that the at least one field has been filled with the at least one value; computing device, memory and processor.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the computing device, a memory and processor are caused to perform these steps. The computing device, a memory and processor, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting insignificant extra-solution activities. For instance, the steps of “establish a decentralized identifier communication (DIDComm) protocol connection with a wallet application; send a request to the wallet application for a verifiable credential; fill at least one field of a web application with the at least one value specified by the verifiable credentials and update the web application to reflect that the at least one field has been filled with the at least one value,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “computing device, memory and processor.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0028, 0056. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. 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.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2, 9-10, 14, 16, 18-20 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 3-5 and 11 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, dependent claims 6-7, 12-13 and 17 recite additional elements, but these additional elements, when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-13, 15-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murdoch et al (Murdoch hereinafter, CN 115191103 A).
Re claim 1. Murdoch discloses a system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: establish a decentralized identifier communication (DIDComm) protocol connection with a wallet application (see the abstract); send a request to the wallet application for a verifiable credential (see “Contents of the Invention, paras 2, 5-7); receive, from the wallet application, the verifiable credential (see “Contents of the Invention, paras 2, 5-7); verify that the verifiable credential is valid (see “Contents of the Invention, paras 2, 5-7): fill at least one field of a web application with the at least one value specified by the verifiable credential; and update the web application to reflect that the at least one field has been filled with the at least one value (see fig.8A and Fig. 8b).
Re claim 2. Murdoch discloses the system of claim 1, wherein the machine-readable instructions further cause the computing device to at least: include a decentralized identifier (DID) in the request to the wallet application; and wherein the at least one verifiable credential is issued by an issuer identified by the DID (see the abstract).
Re claim 3. Murdoch discloses the system of claim 2, wherein the DID identifies a verifiable credential issuer trusted by a host of the web application (see “Contents of the Invention, para 6).
Re claim 4. Murdoch discloses the system of claim 2, wherein the DID identifies a host of the web application (see “specific implementation examples,” paras 29-30).
Re claim 5. Murdoch discloses the system of claim 1, wherein the machine-readable instructions that cause the computing device to fill the at least one field with the at least one value specified by the verifiable credential further cause the computing device to at least: identify an attribute of the verifiable credential, the attribute corresponding to the at least one value; and determine that the attribute corresponds to the at least one field in the web application (see “Contents of the Invention, paras 2, 5-7, also see fig.8A and Fig. 8b).
Re claim 6. Murdoch discloses the system of claim 1, wherein the machine-readable instructions that cause the computing device to establish the DIDComm protocol connection with the wallet application further cause the computing device to at least update the web application to show a matrix bar code representing a DIDComm message (see the abstract and “Contents of the Invention, paras 5-7).
Re claim 7. Murdoch discloses the system of claim 1, wherein the machine-readable instructions further cause the computing device to send the update for the web application that reflects the at least one field has been filled with the at least one value to a browser on a client device (see “specific implementation examples,” para 38).
Re claim 8. Claim 8 recites similar limitations to claim 1 and thus rejected using the same art and rationale as in claims 1 above.
Re claim 9. Murdoch discloses the method of claim 8, further comprising: including a decentralized identifier (DID) of a host of the web application in the request to the wallet application; and wherein the at least one verifiable credential is issued by the host of the web application (see the abstract).
Re claim 10. Murdoch discloses the method of claim 8, further comprising: including a decentralized identifier (DID) of a verifiable credential issuer trusted by the web application in the request to the wallet application; and wherein the at least one verifiable credential is issued by the verifiable credential issuer trusted by the web application (see the abstract and “Contents of the Invention, paras 5-7).
Re claim 11. Murdoch discloses the method of claim 8, wherein filling the at least one field with the at least one value specified by the verifiable credential further comprises: identifying an attribute of the verifiable credential, the attribute corresponding to the at least one value; and determining that the attribute corresponds to the at least one field in the web application (see the abstract and “Contents of the Invention, paras 5-7).
Re claim 12. Murdoch discloses the method of claim 8, wherein establishing the DIDComm protocol connection with the wallet application further comprises updating the web application to show a matrix bar code representing a DIDComm message (see the abstract and “Contents of the Invention, paras 5-7).
Re claim 13. Murdoch discloses the method of claim 8, further comprising sending the update for the web application that reflects the at least one field has been filled with the at least one value to a browser on a client device (see the abstract and “Contents of the Invention, paras 5-7).
Re claim15. Claim 15 recites similar limitations to claim 1 and thus rejected suing the same art and rationale as in claim 1, above.
Re claim 16. Murdoch further discloses the system of claim 15, wherein the machine-readable instructions, when executed by the processor, further cause the computing device to at least: show a prompt on a display of the computing device, the prompt requesting a user to grant permission to share the verifiable credential with the web application; and the verifiable credential is returned to the web application in response to receipt of permission to share the verifiable credential with the web application (see the abstract and “Contents of the Invention,” paras 5-9).
Re claim 17. Murdoch further discloses the system of claim 15, wherein the machine-readable instructions, when executed by the processor, further cause the computing device to at least receive a web page associated with the web application, the web page comprising a form with a value from the verifiable credential included in a field of the form (see fig.8A and fig.8B).
Re claim 20. Murdoch further discloses the system of claim 15, wherein the DID is included in a list of DIDs that identify a set of issuers trusted by the web application (“Contents of the Invention,” para 2).
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.
Claim(s) 14, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Murdoch.
Re claims 14. Murdoch does not explicitly disclose the method of claim 13, wherein the field is not editable. However, official notice is taken by the examiner that it is old and well-known in the computer art to configure the web page form to either be editable or un-editable. Thus it would have been obvious to one of ordinary skill in the art to incorporate the old and well-known read-only mechanism in the system of Murdoch to enforce data integrity.
Re claim 18. Murdoch does not explicitly disclose the method of claim 17, wherein the field is editable. However, official notice is taken by the examiner that it is old and well-known in the computer art to configure the web page form field to either be editable or un-editable. Thus it would have been obvious to one of ordinary skill in the art to incorporate the old and well-known read-only mechanism in the system of Murdoch to allow users to correct or update data entry.
Re claim 19. Claim 19 recites similar limitations to claim 14 and thus rejected using the same art and rationale as in claim 14, above.
Response to Arguments
Applicant's arguments filed on 03/09/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims do not recite a judicial exception, the examiner disagrees. The examiner contends that the claim as a whole recites a mental process. For instance, the claim language “receive…the verifiable credential; and verify that the verifiable credential is valid” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the claims integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “establish a decentralized identifier communication (DIDComm) protocol connection with a wallet application; send a request to the wallet application for a verifiable credential; fill at least one field of a web application with the at least one value specified by the verifiable credentials and update the web application to reflect that the at least one field has been filled with the at least one value; computing device, memory and processor.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the computing device, a memory and processor are caused to perform these steps. The computing device, a memory and processor, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting insignificant extra-solution activities. For instance, the steps of “establish a decentralized identifier communication (DIDComm) protocol connection with a wallet application; send a request to the wallet application for a verifiable credential; fill at least one field of a web application with the at least one value specified by the verifiable credentials and update the web application to reflect that the at least one field has been filled with the at least one value,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
The alleged advantages and improvements that the applicant touts do not concern an improvement to computer technology and capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data. (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept’’); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm’).
In response to applicant’s argument that the independent claims are improperly rejected under 35 U.S.C 101, the examiner disagrees. The examiner contends that dependent claims 2, 9-10, 14, 16, 18-20 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 3-5 and 11 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, dependent claims 6-7, 12-13 and 17 recite additional elements, but these additional elements, when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
Prosecution Insights