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
INFORMATION DISCLOSURE STATEMENT
The information disclosure statement (IDS) submitted on 12/09/2024 & 06/17/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
RESTRICTION RESPONSE
During a telephone conversation with Michael Monyok on 11/05/25 a provisional election was made without traverse to prosecute the invention of group 1, claims 1-8 & 11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-10 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Applicant is reminder to cancel claims 9-10.
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 1-8 & 11 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 “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 tone; capturing an image of the user signing the document on the electronic device, wherein the unique color tone is captured in the image; and matching the captured color tone to the unique color tone associated with the document.”, 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, “instructing, displaying, capturing, matching” 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 “instructing, displaying, capturing, matching” steps. The “electronic device” are recited at a high-level of generality (i.e., as a generic processor) “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 tone; capturing an image of the user signing the document on the electronic device, wherein the unique color tone is captured in the image; and matching the captured color tone to the unique color tone associated with the document.” 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 “instructing, displaying, capturing, matching” 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 2, this claim is directed to mental process (“generating/deriving a sequence and selecting a tone”) and insignificant extra-solution activity (“tone selection”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
As to claim 3, this claim is directed to mental process (“authenticating/matching signature based on captured tone”) and insignificant extra-solution activity (“authentication”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
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 11, this claim is directed mental process (“comparing video frames to a stored image”) and insignificant extra-solution activity (“data analysis adjunct”). Thus, this claim does not integrate the abstract idea into a practical application or constitute significantly more than the abstract.
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 of this title, 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.
Claims 1-3 & 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over
WU (U.S. Publication 2019/0347317) in view of DING et al. (U.S. Publication 2020/0082192)
As to claim 1, WU discloses a method of authenticating an electronic signature comprising: instructing the user to electronically sign the document; displaying on an electronic device having a screen the document to the user; (42, Fig. 6 & [0033] & Abstract discloses displaying/instructing the original document for signing.) capturing an image of the user signing the document on the electronic device (43-44, Fig. 6 & Abstract discloses recording a real time video of a user as the user inputs a set of signature strokes that constitute a signature).
WU is silent to displaying on an electronic device having a screen the document to the user with a unique color tone; wherein the unique color tone is captured in the image; and matching the captured color tone to the unique color tone associated with the document.
However, DING discloses controlling the screen to emit a color sequence (110, Fig. 1 & [0021, 0023, 0026-0027] discloses controlling a display screen to display a color according to a predetermined color display sequence, the color display sequence including at least two different. Color options include red, white, blue and black.,), capturing images where the color is reflected on the user (120, Fig. 1 & [0034] discloses capturing an image of a target object in the color display process), and matching the captured sequence to the displayed sequence (140, Fig. 1 & [0040] discloses determining whether the target object is live (e.g. alive) based on a matching relationship between the color display sequence and the color change sequence).
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify WU’s disclosure to include the above limitations in order to visually bind the signers act to the specific document being displayed.
As to claim 2, WU in view of DING discloses everything as disclosed in claim 1. In addition, DING discloses wherein the unique color tone is randomly generated from a unique sequence associated with the document. ([0030-0032] & Fig. 2 discloses random generation of the color sequence; sequential single-color display.)
As to claim 3, WU in view of DING discloses everything as disclosed in claim 1. In addition, DING discloses authenticating the signature based on the captured color tone. (110-140, Fig. 1)(230-260, Fig. 2)([0005-0013], [0021-0023] discloses accept/reject (liveness) by matching displayed vs. captured color)
As to claim 5, WU in view of DING discloses everything as disclosed in claim 1. In addition, DING discloses wherein the unique color tone is captured indirectly through a reflection on the user. (230-240, Fig. 2 & [0021-0023] discloses the display color irradiates the face; images are captured during the color display i.e. reflection)
As to claim 6, WU in view of DING discloses everything as disclosed in claim 1. In addition, WU discloses displaying the document.
WU in view of DING’s current modification is silent to wherein the unique color tone is displayed in a background of the electronic document.
However, DING discloses controlling the screen color. Putting the challenge color as the document background. (Fig. 1-2, 3-6 & [0021-0023])
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify WU in view of DING’s current modification’s disclosure to include the above limitations in order to keep the color visible during signing without obscuring text.
Claims 4 & 11 are rejected under 35 U.S.C. 103 as being unpatentable over WU (U.S. Publication 2019/0347317) in view of DING et al. (U.S. Publication 2020/0082192) as applied in claim 1, above further in view of Dewan et al. (U.S. Publication 2014/0230046)
As to claim 4, WU in view of DING discloses everything as disclosed in claim 1 but is silent to comparing the captured image of the user to a known image of the user.
However, Dewan discloses capturing faces while random colored lights flash; comparing to previously collected face templates. (Fig. 2, 4-5 & [0021-0023])
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify WU in view of DING’s disclosure to include the above limitations in order to increase identity assurance by template face matching along the color match.
As to claim 11, WU in view of DING & Dewan discloses everything as disclosed in claim 4. In addition, Dewar discloses but is silent to comparing the captured video of the user to a known image of the user. (Figs. 2, 4 & [0021, 0023] discloses comparing captured faces to stored templates).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over
WU (U.S. Publication 2019/0347317) in view of DING et al. (U.S. Publication 2020/0082192) as applied in claim 1, above further in view of Thakkar et al. (U.S. Publication 2019/0386984)
As to claim 7, WU in view of DING discloses everything as disclosed in claim 1 but is silent to displaying the document to the user with a unique audio tone; capturing a sound recording when the user signs the document, wherein the unique audio tone is captured in the sound recording; and matching the captured audio tone to the unique audio tone associated with the document.
However, Thakker discloses emitting and receiving ultrasonic audio that carries a session OTP; then verify it. (Fig. 3B, 3E, 4 & [0013-0014])
It would have been obvious to one of ordinary skill in the art at the time of effective filing to modify WU in view of DING’s disclosure to include the above limitations in order to embed a second synchronized acoustic token in the recorded session to strengthen anti spoofing (e.g. redundancy).
As to claim 8, WU in view of DING & Thakkar discloses everything as disclosed in claim 7.
In addition, DING discloses color match decisions. (Fig. 1-2, 3-6 & [0021-0023])
Thakker discloses wherein the user is authenticated using at least one of the captured color tone and the captured audio tone. (audio-OTP verification.) (Fig. 3B, 3E, 4 & [0013-0014])
CONCLUSION
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.
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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