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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 16, 2026, has been entered.
Status of Claims
Applicant filed an amendment on March 16, 2026. Claims 1-18 were pending in the Application. Claims 1 and 7 are amended. No new claims have been added. Claims 2-3 and 8-9 have been canceled, with claims 13-18 remaining canceled. Thus claims 1, 4-7, and 10-12 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of 35 U.S.C. §101, Applicant continues to respectfully disagree and traverses the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “the claims recite a process of customer verification information where the relying party is able to verify the customer information without receiving the customer information; this integrates the alleged judicial exception into a practical application by using the assertion – which is issued by a financial institution backend based on Know Your Customer verification – to verify the customer information without actually having the customer information; and these elements together recite a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment”.
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
The Specification, (PG Pub US 20250190978 A1, para 1), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘978 A1, para 1), discloses that the invention generally relates to identity proofing via protocols from trusted parties, and is grouped under “Certain Methods of Organizing Human Activity, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, and grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, in prong one of step 2A. . (MPEP §2106.04 II.A.1.).
Claim 1 provides additional evidence, and recites the limitations of “receiving, by a financial institution backend for a financial institution, information about a customer;
verifying, by the financial institution backend, the information using Know Your Customer standards; receiving, by a digital wallet application for the financial institution on a customer electronic device, a customer login from customer during a session with the customer; receiving, by the digital wallet application and from the customer, a request for an assertion based on the information about the customer;
redirecting, by the digital wallet application, the session with the customer to a financial institution backend; authenticating, by the financial institution backend, the customer; confirming, by the financial institution backend, the information about the customer using verified customer information in a verified customer information database; redirecting, by the financial institution backend, the session with the customer to the digital wallet application; returning, by the financial institution backend, the assertion to the digital wallet application; writing, by the digital wallet application, the assertion to a distributed ledger; sending, by the digital wallet application, a pointer to the assertion on the distributed ledger to a relying party computer program as part of a process of verifying the information about the customer without the customer providing the information to the relying party computer program;
accessing, by the relying party computer program and using the pointer, the assertion on the distributed ledger as part of verification of the information about the customer; and verifying, by the relying party computer program, the information about the customer based on the assertion”, which represent the abstract idea of an “identity verification protocol.” (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a financial institution backend for a financial institution”, “a digital wallet application for the financial institution on a customer electronic device”, “a verified customer information database”, and “writing, by the digital wallet application, the assertion to a distributed ledger”, represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol”.
Additionally, “National Institute of Standards and Technology (NIST), Assessment of Access Control Systems, Interagency Report 7316”, September 2006, page 45, defines the term “protocol” as a set of rules (i.e., formats and procedures) for communications that computers use when sending signals between themselves. As such, a “communication protocol” is then grouped under “Certain Methods of Organizing Human Activity, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, and grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, as the invention generally relates to an “identity verification protocol.” (MPEP §2106.04 II.A.1.). Therefore, based on this NIST definition for the term “protocol” and the method limitations recited in claim 1, Applicant’s claimed subject matter represents an abstract idea of an “identity verification protocol.”
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea of an “identity verification protocol”, grouped under “Certain Methods of Organizing Human Activity, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, and grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol”. The claims are not directed to improving computers or related technologies, but improving the abstract idea for an “identity verification protocol”. For potential improvement in an abstract idea of an “identity verification protocol”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. an identity verification protocol concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 1 is non-statutory.
Claim 7 also recites the abstract idea of an “identity verification protocol”, as well as the additional elements of “a system”, “a customer electronic device for a customer executing a digital wallet application”, “a financial institution backend for a financial institution executing”, “a verified customer information database”, “ relying party electronic device executing”, “a distributed ledger”, and “the digital wallet application is configured to write the assertion to the distributed ledger”, which represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of an “identity verification protocol” using computer technology (e.g., “a financial institution backend” and “a distributed ledger”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 7 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
In the context of 35 U.S.C. § 112(b), Means-Plus-Function the rejection under 35 U.S.C. § 112(b), of claim 7 has been withdrawn. The term “application” is not a placeholder term, therefore the claims do not invoke 112(f).
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, 4-7, and 10-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1 and 4-6 are directed to a “method”; and claims 7 and 10-12 are directed to a “system”. Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 1 recites the abstract idea of an “identity verification protocol”, which is a form of managing personal behavior or relationships or interactions between people and a form of
commercial or legal interactions (i.e., organizing human activity), and therefore, an abstract idea. Specifically, the claim recites “receiving, by a financial institution backend for a financial institution, information about a customer; verifying, by the financial institution backend, the information using Know Your Customer standards; receiving, by a digital wallet application for the financial institution on a customer electronic device, a customer login from customer during a session with the customer; receiving, by the digital wallet application and from the customer, a request for an assertion based on the information about the customer; redirecting, by the digital wallet application, the session with the customer to a financial institution backend; authenticating, by the financial institution backend, the customer; confirming, by the financial institution backend, the information about the customer using verified customer information in a verified customer information database; redirecting, by the financial institution backend, the session with the customer to the digital wallet application; returning, by the financial institution backend, the assertion to the digital wallet application; writing, by the digital wallet application, the assertion to a distributed ledger; sending, by the digital wallet application, a pointer to the assertion on the distributed ledger to a relying party computer program as part of a process of verifying the information about the customer without the customer providing the information to the relying party computer program; accessing, by the relying party computer program and using the pointer, the assertion on the distributed ledger as part of verification of the information about the customer; and verifying, by the relying party computer program, the information about the customer based on the assertion”. The abstract idea is in italics, and the additional elements are in bold. (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a financial institution backend for a financial institution”, “a digital wallet application for the financial institution on a customer electronic device”, “a verified customer information database”, and “writing, by the digital wallet application, the assertion to a distributed ledger”, amounts to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol.”
Additionally, “National Institute of Standards and Technology (NIST), Assessment of Access Control Systems, Interagency Report 7316”, September 2006, page 45, defines the term “protocol” as a set of rules (i.e., formats and procedures) for communications that computers use when sending signals between themselves. As such, a “communication protocol” is then grouped under “Certain Methods of Organizing Human Activity, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, and grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, as the invention generally relates to an “identity verification protocol.” (MPEP §2106.04 II.A.1.). Therefore, based on this NIST definition for the term “protocol” and the method limitations recited in claim 1, Applicant’s claimed subject matter represents an abstract idea of an “identity verification protocol.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of an “identity verification protocol” using computer technology (e.g., “a customer electronic device” and “a digital wallet application”). Therefore, these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 1 is non-statutory.
Claim 7 also recites the abstract idea of an “identity verification protocol”, as well as the additional elements of “a system”, “a customer electronic device for a customer executing a digital wallet application”, “a financial institution backend for a financial institution executing”, “a verified customer information database”, “ relying party electronic device executing”, “a distributed ledger”, and “the digital wallet application is configured to write the assertion to the distributed ledger”, which amount to merely “apply it”, as they represent the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describe the concept of an “identity verification protocol” using computer technology (e.g., “a distributed ledger” and “a digital wallet application”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea. And as the computer does no more than serve as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or technical field. Therefore, claim 7 is non-statutory.
Dependent claims 4-6 and 10-12 further describe the abstract idea of an “identity verification protocol”, which is insufficient to overcome the rejections of claims 1 and 7, above.
Dependent claims 4, 6, 10, and 12 do not recite any new additional elements that integrate the abstract idea into a practical application, and that do no more than represent a computer performing functions that correspond to implementing the acts of an “identity verification protocol”, when analyzed under Step 2A, Prong Two. And, as they do no more than employ a computer as a tool to implement the abstract idea, they do not improve computer functionality nor improve another technology or a technical field, when analyzed under Step 2B.
Dependent claims 5 and 11 recite the additional element of “an application programming interface call”, which does no more than employ a computer as a tool to implement the abstract idea. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality or improve another technology or technical field. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve computer functionality nor improve another technology or a technical field, when analyzed under Step 2B.
Hence, claims 1, 4-7, and 10-12 are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-7, and 10-12 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New Matter
In regards to claim 1, the specification does not disclose what a process verifying the information about the customer without the customer providing the information to the relying party computer program comprises. Claim 1 recites “sending, …., a pointer to the assertion on the distributed ledger … as part of a process verifying the information about the customer without the customer providing the information to the relying party computer program”. The specification does not adequately inform one of ordinary skill how the limitation “as part of a process verifying the information about the customer without the customer providing the information to the relying party computer program” is to be performed. Specification, (PG Pub US 20250190978 A1, FIG. 2, items 240, 245; para 47), recites “… In step 240, the digital wallet application may write the assertion to the distributed ledger, and in step 245, may send a pointer to the assertion to a relying party or the customer …”, which discloses the digital wallet application writing the assertion to the distributed ledger and sending a pointer to the assertion to a relying party or the customer, but does not disclose a process verifying the information about the customer without the customer providing the information to the relying party computer program. Thus, specification, (‘978 A1, FIG. 2, items 240, 245; para 47), does not disclose what a process verifying the information about the customer without the customer providing the information to the relying party computer program comprises. Therefore, this is an issue of new matter, which is matter not present on the filing date of the application in the specification, claims, or drawings that has been added after the application filing. Additionally, similar language is recited in claim 7. Dependent claims 4-6, which depend from claim 1; and dependent claims 10-12, which depend from claim 7, are also similarly rejected. (MPEP § 2163.06 I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rodriguez et al (U. S. Patent Application Publication No. 20180176017 A1) – Digital Identity System
Rodriguez discloses a method of a digital identity system generating a sharing token for authenticating a bearer to a validator, wherein a data store of the digital identity system holds a plurality of attributes of the bearer, the method comprising implementing by the digital identity system the following steps: receiving at the digital identity system from a bearer an electronic sharing token request, wherein the token request identifies at least one of the bearer's attributes in the data store selected for sharing with a validator; in response to the electronic token request, generating a sharing token, which is unique to that request, for presentation by the bearer to a validator; associating with the unique sharing token at the digital identity system the identified at least one bearer attribute; and issuing to the bearer the unique sharing token; and wherein later presentation of the unique sharing token to the digital identify system by a validator causes the at least one bearer attribute associated with the sharing token to be rendered available to the validator by the digital identity system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN R CHISM whose telephone number is (571)272-5915. The examiner can normally be reached on Monday-Friday 8:00 AM – 3:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan D. Donlon can be reached at (571) 270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN R CHISM/ Examiner, Art Unit 3692
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692
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