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 .
DETAILED ACTION
RESPONSE TO ARGUMENTS
35 USC 101 Alice Rejection
Argument 1
Applicant submits USPTO guidance requires examiner to evaluate whether the specification describes an improvement to computer functionality, another technology or a technical field. Applicant argues present claims improve the technical field of electronic signature authorization. After carefully reviewing applicant amendments, 35 USC 101 guidance and claim limitations, examiner respectfully disagrees.
In response, examiner submits amended claims do not recite an improvement in the functioning of a computer, display, camera, image capture device, or electronic signature system itself. Amended claim recite using generic electronic device components to perform the steps of assigning information, displaying information, capturing information, comparing information, and authenticating based on a match. These are information processing and authentication steps, not a technological improvement to computer operation.
Applicant also cites December 5, 2025 Desjardins, in response examiner submits Desjardins involved machine learning model training where the specification and claims reflected improvements such as reduced storage, reduced system complexity, and preservation of performance attributes during subsequent computational tasks. Examiner submits even under updated guidance amended claim 1 remains directed to abstract authentication/matching process implemented using generic electronic device functions.
In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Argument 2
Applicant submits claims solve the problem of a signature may not be authenticated, the document may be signed by someone other than the indicated signer, and prior video authentication system can be manipulated. Applicant submits claims solves above issue by displaying a unique color signal on the users device and capturing that signal in an image or video recorded when the signature is made.
In response, amended claims do not recite an improvement in the functioning of a computer, display, camera, image capture device, or electronic signature system itself. Examiner submits claims use conventional device functions to display, capture, compare and authenticate. Examiner submits claims perform instructing, displaying, capturing and matching steps using generic computer components. Examiner submits claims may improve confidence in electronic signature transaction but does not improve computer technology itself. In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Argument 3
Applicant submits the claim recites a concrete device implemented authentication pipeline.
In response, examiner submits claimed pipeline is a sequence of abstract information processing steps: (1) assign authentication data to a document; (2) derive a visible challenge from the data; (3) capture a response during signing; (4) compare the response to the expected challenge; and (5) authenticate if the comparison matches.
Claimed steps scope can be described as authentication/challenge response process, which is a method of organizing human activity and/or a mental process when recited at the level of comparing expected and captured information.
Examiner submits amended claim 1 remains directed to abstract authentication/matching process implemented using generic electronic device functions. In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Argument 4
Applicant submits claimed steps impose meaningful limits and are not merely instructions to apply an abstract idea on a generic computer.
In response, examiner submits the claim requires an “electronic document”, “electronic device”, “screen”, “image”, and “signature”, but claims do not improve those components. Examiner submits amended claim 1 remains directed to abstract authentication/matching process implemented using generic electronic device functions. Abstract ideas via generic devices do not convert the exception into a practical application. In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Argument 5
Applicant submits claims, like Enfish, these claims are directed to an improvement in computer capabilities, and like Desjardians, the claims should be recognized as improving a technical field. Applicant submits specification discusses manipulated video authentication and argues claimed color sequence mechanism improves electronic signature authentication.
In response, examiner submits applicant asserted improvement is improved authentication reliability. However, the claim accomplishes applicant asserted improvement by using conventional display, capture, comparison, and authentication functions. Examiner submits improving the reliability of an authentication decision is not the same as improving the functioning of a computer or another technology. Also, Desjardins claims and specification reflected improvements in machine learning technology itself, including reduced storage and reduced system complexity during model training. The present claims does not recite machine learning training, improved model architecture, reduced storage requirements, reduced processing requirements or improved computer performance. In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Argument 6
Applicant submits USPTO 2024 Subject Matter Eligibility Example 47. Applicant submits claims likewise recite a technical authentication improvement.
In response, examiner submits claim Eligibility example 47 and current claims do not share parallel reasoning. In this case, claims discloses an authentication decision based on information comparison, implemented using generic electronic device components. In view of above arguments, examiner submits rejection is sufficient and respectfully maintained.
Prior Art Rejection
The examiner acknowledges the amendment of claims 1 & 5-8, addition of claims 12-16 and the cancellation of claims 2-3 & 11 filed 05/18/2026. Applicants arguments filed on (05/18/2026) have been fully considered but are deemed moot in view of new grounds of rejection. Due to the variation in claim scope via amendments a new ground of rejection is proper.
Applicant is reminded withdrawn claims 9-10 are required to be cancelled.
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, 4-8 & 12-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to as ineligible under subject eligibility test. In the Subject Matter Eligibility Test for Products and Processes (Federal Register, Vol. 79, No. 241, dated Tuesday, December 16, 2014, page 74621), The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional device elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
Claim 1
Step 1
This step inquires “is the claim to a process, article of machine, manufacture or composition of matter?” Yes,
Claim 1 – “Method” is a process.
Step 2A - Prong 1
This step inquires “does the claim recite an abstract idea, law or natural phenomenon”. This claim appears to directed to an abstract idea.
The limitation of “sending an electronic document to a user; assigning a randomly-generated, unique sequence to the document; instructing the user to electronically sign the document; displaying on an electronic device having a screen the document to the user with a unique color sequence generated from the unique sequence; capturing a signing event comprising an image of the user signing the document on the electronic device, wherein the image includes a captured color sequence; comparing the captured color sequence to the unique color sequence; and authenticating the electronic signature based on a determination that the captured color sequence matches the unique color sequence.”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind (e.g. mathematical concepts, mental processes or certain methods of organizing human activity) but for the recitation of generic computer components. That is, other than reciting “electronic device” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “electronic device” language, “sending, assigning, instructing, displaying, capturing, comparing, authenticating” in the context of this claim encompasses covers performance of the limitation in the mind (e.g. mathematical concepts, mental processes or certain methods of organizing human activity).
STEP 2A – PRONG 1 - CONCLUSION
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A - Prong 2
This step inquires “does the claim recite additional elements that integrate the judicial exception into a practical application”. This judicial exception is not integrated into a practical application. In particular, the claim recites one additional element – using a “electronic device” to perform “sending, assigning, instructing, displaying, capturing, comparing, authenticating” steps. The “electronic device” are recited at a high-level of generality (i.e., as a generic processor) “sending an electronic document to a user; assigning a randomly-generated, unique sequence to the document; instructing the user to electronically sign the document; displaying on an electronic device having a screen the document to the user with a unique color sequence generated from the unique sequence; capturing a signing event comprising an image of the user signing the document on the electronic device, wherein the image includes a captured color sequence; comparing the captured color sequence to the unique color sequence; and authenticating the electronic signature based on a determination that the captured color sequence matches the unique color sequence.” such that it amounts no more than mere instructions to apply the exception using a generic computer component.
STEP 2A – PRONG 2 - CONCLUSION
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B
The critical inquiry here is does the claim recite additional elements that amount to “significantly more” than the judicial exception? The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a “electronic device” to perform “sending, assigning, instructing, displaying, capturing, comparing, authenticating” steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Dependent Claims
As to claim 4, this claim is directed to mental process (“comparing images”) and insignificant extra-solution activity (“data analysis”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 5, this claim is directed to mental process (“inferring a reflection corresponds unique color tone”) and insignificant extra-solution activity (“data gathering detail”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 6, this claim is directed to mental process (“choosing a electronic document background”) and insignificant extra-solution activity (“presentation of information on a UI”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 7, this claim is directed to mental process (“matching captured audio to expected unique audio”) and insignificant extra-solution activity (“emitting/recording sound is data gathering/output”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 8, this claim is directed to mental process (“authentication choice between color tone and audio tone”) and insignificant extra-solution activity (“post solution decision”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 12, this claim is directed to mental process (“comparing the captured image of the user to an image from an identification document”) and insignificant extra-solution activity (“identification document uploaded by the user is data gathering”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 13, this claim is directed to insignificant extra-solution activity (“field of use/data source limitation”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 14, this claim is directed to mental process (“creating, recognizing or using a character sequence for authentication is a rule based information operation that can be performed mentally or with pen and paper.”) and insignificant extra-solution activity (“data format limitation”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 15, this claim is directed to mental process (“translating one symbolic representation into another and comparing the translated result to an expected sequence are mental operations”) and insignificant extra-solution activity (“data conversion step used to prepare information”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 16, this claim is directed to mental process (“underlying decision is a mental process”) and insignificant extra-solution activity (“post solution activity”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
CONCLUSION
No prior art has been found for claims 1, 4-8 & 12-16 in their current form.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen P Coleman whose telephone number is (571)270-5931. The examiner can normally be reached Monday-Thursday 8AM-5PM.
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, Andrew Moyer can be reached at (571) 272-9523. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Stephen P. Coleman
Primary Examiner
Art Unit 2675
/STEPHEN P COLEMAN/Primary Examiner, Art Unit 2675
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