FINAL ACTION
(REISSUE OF U.S. PATENT 11,496,316)
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 3
2. STATUS OF CLAIMS 4
3. RESPONSE TO ARGUMENTS 4
4. PRIOR ART CITED 5
5. BROADEST REASONABLE INTERPRETATION (BRI) 5
6. FUNCTIONAL PHRASES INVOKING 35 USC § 112(f) 7
6.1. Functional Phrase #1 8
6.1.1. Prong (A) 9
6.1.2. Prong (B) 10
6.1.3. Prong (C) 11
6.1.4. Corresponding Structure for Functional Phrase #1 12
6.2. Functional Phrase #2 13
6.2.1. Prong (A) 14
6.2.2. Prong (B) 15
6.2.3. Prong (C) 15
6.2.4. Corresponding Structure for Functional Phrase #2 16
6.3. Functional Phrase #3 19
6.3.1. Prong (A) 19
7. CLAIM REJECTIONS – 35 USC § 251 (Original Patent Requirement) 20
8. CLAIM REJECTIONS – 35 USC § 251 (New Matter) 22
9. CLAIM REJECTIONS – 35 USC § 112(a) 22
9.1. New Matter 23
10. CLAIM REJECTIONS – 35 USC § 112(b) 24
10.1. Insufficient Disclosure Of Corresponding Structure 25
10.2. Conclusion of 35 USC § 112(b) Rejection 25
11. ALLOWABLE SUBJECT MATTER 26
12. CONCLUSION 27
ACKNOWLEDGEMENTS
This Final Office action addresses U.S. reissue application No. 18/635,284 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 15 April 2024 (“Actual Filing Date”).
The Instant Application is a broadening reissue application of U.S. Patent No. 11,496,316 (“Patent Under Reissue” or “'316 Patent”) titled “SYSTEM AND METHOD FOR IDENTITY VERIFICATION FOR ONLINE DATING.”
An application for the Patent Under Reissue was filed on 15 July 2022 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 17/865,798 (“Base Application”) and issued on 08 November 2022 with claims 1–19 (“Originally Patented Claims”).
On 24 July 2024, a non-final Office action was issued (“July 2024 Non-Final Action”).
On 21 October 2024, Applicant submitted a response to the July 2024 Non-Final Action (“October 2024 Response”).
On 07 November 2024, a final Office action was issued (“November 2024 Final Action”).
On 31 January 2025, Applicant submitted a response to the November 2024 Final Action (“January 2025 Response”) and a request for continued examination (“January 2025 RCE”).
On 31 March 2025, a notice of allowability was issued (“March 2025 NOA”).
On 16 June 2025, Applicant submitted a response to the March 2025 NOA (“June 2025 Response”) and a request for continued examination (“June 2025 RCE”).
On 15 October 2025, a non-final Office action was issued (“October 2025 Non-Final Action”).
On 13 January 2026, Applicant submitted a response to the October 2025 Non-Final Action (“January 2026 Response”).
This Final Office action addresses the January 2026 Response.
STATUS OF CLAIMS
Claims 2–10 and 12–21, as set forth in the January 2026 Response, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 2–10 and 12–21 are rejected under 35 USC § 251.
Claims 2–10 and 12–21 are rejected under 35 USC § 112(a).
Claims 2–10 and 20 are rejected under 35 USC § 112(b).
RESPONSE TO ARGUMENTS
Applicant argues,
The amendments include updating encryption to use the public key and decryption to use the private key. Support can at least be found in C8:L62 to C9:L23. This section described public-key cryptography, stating that “anyone can encrypt a message using the receiver’s public key, but that encrypted message can only be decrypted with the receiver’s private key.”
January 2026 Response at page 11. This argument is not persuasive. The statement “anyone can encrypt a message using the receiver’s public key, but that encrypted message can only be decrypted with the receiver’s private key,” as argued, supra, does not support the newly added limitations. See § 112(a) rejection below. For example, this statement does not disclose that the web server decrypts user profile data with a private key that is also used to make a digital signature appended to a request from the client, as now claimed, infra.
PRIOR ART CITED
The following prior art patents and printed publications are cited below:
U.S. Patent 11,366,916 B1 (“Caplovitz”);
U.S. Patent Application Publication 2018/0342018 A1 (“Pancholi”);
U.S. Patent Application Publication 2004/0186912 A1 (“Harlow”);
U.S. Patent Application Publication 2004/0030887 A1 (“Harrisville-Wolff”); and
U.S. Patent 7,028,180 B1 (“Aull”).
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
any “3. Every: Any dog likes meat.” American Heritage Dictionary of the English Language (5th Ed. 2011).
all “4. Every: got into all manner of trouble.” American Heritage Dictionary of the English Language (5th Ed. 2011).
every “1. a. Constituting each and all members of a group without exception.” American Heritage Dictionary of the English Language (5th Ed. 2011).
a “1. Used before nouns and noun phrases that denote a single but unspecified person or thing: a region; a person.” American Heritage Dictionary of the English Language (5th Ed. 2011).
edit “To make a change to an existing file or document.” Microsoft Computer Dictionary (5th Ed. 2002).
FUNCTIONAL PHRASES INVOKING 35 USC § 112(f)
The following is a quotation of 35 USC § 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
One exception to the broadest reasonable interpretation standard occurs when a claimed phrase is interpreted in accordance with 35 USC § 112(f) (“§ 112(f)”). See MPEP § 2181 et seq. To invoke § 112(f), a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation should be interpreted in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f) is rebutted when the claim limitation recites sufficient structure to perform the entire claimed function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be interpreted in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure to perform the entire claimed function.
Claim limitations that use the word “means” are therefore being interpreted under § 112(f), except as otherwise indicated below. Conversely, claim limitations that do not use the word “means” are not being interpreted under § 112(f), except as otherwise indicated below.
The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrase invokes § 112(f). If a phrase invokes § 112(f), the corresponding structure for the phrase will also be determined.
Functional Phrase #1
The first functional phrase to be considered is:
client computing device configured to receive data from a user to create a user profile, wherein the data from the user comprises: user contact information entered via the client computing device, a first image of the user’s face taken via a camera on the client computing device, and a second image of the user’s identification card taken via a camera on the client computing device, wherein the data from the user is encrypted using a public key transmitted from a web server, and wherein the encrypted data is transmitted to the web server over the communications network
Claim 20 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following parts:
“client computing device” (“Introductory Phrase of FP#1);
“configured to” (“Linking Phrase of FP#1);
“receive data from a user to create a user profile, wherein the data from the user comprises: user contact information entered via the client computing device” (“Function1 of FP#1”);
“[receive data from a user to create a user profile, wherein the data from the user comprises: …] a first image of the user’s face taken via a camera on the client computing device, and a second image of the user’s identification card taken via a camera on the client computing device” (“Function2 of FP#1”);
“[receive data from a user to create a user profile …] wherein the data from the user is encrypted using a public key transmitted from a web server […]” (“Function3 of FP#1”); and
“wherein the encrypted data is transmitted to the web server over the communications network” (“Function4 of FP#1”).
The four functions noted above, namely Function1 of FP#1, Function2 of FP#1, Function3 of FP#1, and Function4 of FP#1, may also be collectively referred to “Function of FP#1.”
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.” MPEP § 2181 I. (“Prong (A)”).2
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
With respect to the presumption that 35 USC § 112(f) is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112(f) if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880).” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374.
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1, but the entire FP#1 including the Function of FP#1. MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
The Examiner has looked to both general and subject matter specific dictionaries3 and finds no evidence that the term “client computing device” has achieved recognition as a term denoting structure for performing the Function of FP#1. Similarly, the Examiner’s review of the record and search of the prior art finds no evidence that this term has achieved recognition as denoting structure for performing the Function of FP#1. Therefore, based upon consultation of dictionaries, a review of the record, and a search of the prior art patents in this field, the Examiner concludes that the term “client computing device” is not an art-recognized structure to perform the Function of FP#1, and claim 20 does not recite any other structure that would perform this claimed function. Therefore, FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Because nothing in the Patent Under Reissue or the prosecution history of the Base Application suggests otherwise, the Function of FP#1 will have its ordinary meaning. “Ordinary principles of claim construction govern interpretation of this claim language […] and, for all the reasons discussed in the preceding two sections, we construe this function according to its ordinary meaning […].” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333–34 (Fed. Cir. 2004)(citations omitted). “Ordinary principles of claim construction govern interpretation of the claim language used to describe the function.” Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002)(citations omitted).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1. For example, the term “client computing device” is not sufficient structure for executing the claimed Function of FP#1, nor is it modified by sufficient structure for executing the function. Instead, “client computing device” is a generic term that does not implicate sufficient structure, nor is sufficient structure (e.g., an algorithm) expressly recited in the claim.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112(f).
Corresponding Structure for Functional Phrase #1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of the Patent Under Reissue, the corresponding structure of the Function of FP#1 is a combination of a processor (Patent Under Reissue, fig. 4, 402) and each of (1) a keypad, or touchpad, which corresponds to Function1 of FP#1 (Patent Under Reissue, C6:L53 and fig. 4), (2) a camera, which corresponds to Function2 of FP#1 (already recited in the claim; see also Patent Under Reissue, C6:L58–60 and fig. 4), (3) sufficient structure that corresponds to Function3 of FP#1, and (4) a network connection device, which corresponds to Function4 of FP#1 (Patent Under Reissue, fig. 4, 415).
However, Function3 of FP#1 refers to “[receive data from a user to create a user profile …] wherein the data from the user is encrypted using a public key transmitted from a web server […],” supra. This function is not disclosed in the '316 Patent, and therefore the '316 Patent does not disclose sufficient corresponding structure clearly linked or associated with the Function3 of FP#1. Accordingly, claim 20 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 20. For purposes of applying the prior art only, the Examiner will assume that the Function3 of FP#1 is to be interpreted as requiring encryption using the private key, as disclosed. The Examiner suggests amending the claim to reflect this interpretation.
Functional Phrase #2
The second functional phrase to be considered is:
a web server module configured to […] edit user permission in the user profile to permit the user to make the transaction request to the web server from the client computing device, and to require that all transaction requests to the web server from the client computing device include the digital signature[, wherein the digital signature is made using the private key4]; […] wherein the transaction requests consists of requests to browse other user profiles, requests to contact other users, requests to make profiles or edit profiles, requests to engage with other users, or requests to make social media posts.
Claim 20 (“Functional Phrase #2” or “FP#2”).
For purpose of discussion below, FP#2 is broken into the following parts:
“web server module” (“Introductory Phrase of FP#2);
“configured to” (“Linking Phrase of FP#2);
“edit user permission in the user profile to permit the user to make the transaction request to the web server from the client computing device […] wherein the transaction requests consists of requests to browse other user profiles, requests to contact other users, requests to make profiles or edit profiles, requests to engage with other users, or requests to make social media posts” (“Function1 of FP#2”); and
“require that all transaction requests to the web server from the client computing device include the digital signature[, wherein the digital signature is made using the private key]” (“Function2 of FP#2”).
The two functions noted above, namely Function1 of FP#2, and Function2 of FP#2 may also be collectively referred to “Function of FP#2.”
Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#2 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#2, but the entire FP#2 including the Function of FP#2.
The Examiner has looked to both general and subject matter specific dictionaries5 and finds no evidence that the term “web server module” has achieved recognition as a term denoting structure for performing the Function of FP#2. Similarly, the Examiner’s review of the record and search of the prior art finds no evidence that “web server module” has achieved recognition as denoting structure for performing the Function of FP#2. Therefore, based upon consultation of dictionaries, a review of the record before us, and a search of the prior art patents in this field, the Examiner concludes that the term “web server module” is not an art-recognized structure to perform the claimed Function of FP#2, and claim 20 does not recite any other structure that would perform this claimed function. Therefore, FP#2 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#2 (generic placeholder) is modified by the Function of FP#2 (functional language) linked by the Linking Phrase of FP#2. Therefore, the Examiner concludes that FP#2 meets Prong (B).
Because nothing in the Patent Under Reissue or the prosecution history of the Base Application suggests otherwise, the Function of FP#2 will have its ordinary meaning.
Prong (C)
Based upon a review of FP#2, the Examiner finds that FP#2 does not contain sufficient structure for performing the entire Function of FP#2. For example, the term “web server module” is not sufficient structure for executing the claimed Function of FP#2, nor is it modified by sufficient structure for executing the function. Instead, “web server module” is a generic term that does not implicate sufficient structure, nor is sufficient structure (e.g., an algorithm) expressly recited in the claim.
Because FP#2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#2 meets Prong (C). Because FP#2 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#2 invokes § 112(f).
Corresponding Structure for Functional Phrase #2
Because, under the broadest reasonable interpretation, the term “web server module” is construed to cover software, the Function of FP#2 cannot be coextensive with a microprocessor itself. Therefore, the default rule requiring disclosure of an algorithm applies, and the corresponding structure for the Function of FP#2 will be the algorithm disclosed.
First, with respect to Function1 of FP#2, the '316 Patent discloses,
“The database 104 may include a user profile record for each user. […] A user profile may also include […] a user permission regarding whether the user may make transaction requests to the web server.” C5:L12–25; and
“In the next step 314, the server 102 may set a permission in the user profile to allow the user to engage in additional transactions requests with the server, provided that all transaction requests must include a digital signature signed using the private key corresponding to the user 111.” C8:L4–8.
Furthermore, under the broadest reasonable interpretation, the term “edit” is interpreted as “To make a change to an existing file or document.” Microsoft Computer Dictionary (5th Ed. 2002).
Therefore, under the ordinary meaning of the Function1 of FP#2, a POSITA would understand the disclosed algorithm corresponding to the Function1 of FP#2 to include at least the following operation(s):
making a change to the user profile in the database to include a user permission indicating the user is permitted to request to browse other user profiles, provided that the request to browse other user profiles includes a digital signature signed using the private key corresponding to the user, or
making a change to the user profile in the database to include a user permission indicating the user is permitted to request to contact other users, provided that the request to contact other users includes a digital signature signed using the private key corresponding to the user; or
making a change to the user profile in the database to include a user permission indicating the user is permitted to request to make social media posts, provided that the request to make social media posts includes a digital signature signed using the private key corresponding to the user.
Second, with respect to Function2 of FP#2, the '316 Patent discloses,
In step 318, the user 111 may interact with the client module executing on mobile computing device 11 to order or perform additional transaction requests with the server 102. In this step, the server 102 requires that all transaction requests from the user 111 must include a digital signature signed using the private key corresponding to the user 111. Therefore, when the user 111 makes any transaction requests to the server, said request includes a digital signature signed using the private key corresponding to the user 111. As of step 318 and for all transaction requests in the future made by user 111, the server 102 must read the digital signature attached to the request and use the public key corresponding to the user 111 to unencrypt said transaction requests to insure that said request is originating from the user 111. If the server 102 receives any transaction requests form the user 111 that lack a digital signature, or with a digital signature that cannot be unencrypted using the public key corresponding to the user 111, said transaction requests is denied or will remain unanswered.
'316 Patent at C8:L37–55 (emphasis added).
In the above noted disclosure, the disclosed function “requires that all transaction requests from the user [ ] must include a digital signature signed using the private key corresponding to the user [ ]” (emphasis added) is clearly linked and associated to an algorithm including at least the following operations:
reading, by the web server, the digital signature attached to the request;
decrypting, by the web server and using the public key corresponding to the user, the digital signature to ensure that the request is originating from the user; and
denying the request or not responding to the request, by the web server, if step (1) cannot be performed (i.e., the web server determines that the request lacks a digital signature) or if step (2) cannot be performed (i.e., the web server determines that the request includes a digital signature that cannot be decrypted using the public key corresponding to the user).
Therefore, since the Function2 of FP#2 is substantially the same as the disclosed function “requires that all transaction requests from the user [ ] must include a digital signature signed using the private key corresponding to the user [ ]” ('316 Patent at id.; emphasis added), the 3-step algorithm noted above is clearly linked and associated to the Function2 of FP#2 (i.e., “require that all transaction requests to the web server from the client computing device include the digital signature[, wherein the digital signature is made using the private key]”).
Functional Phrase #3
The third functional phrase to be considered is “a client module configured to append a digital signature to a transaction request made to the web server over the communications network, wherein the digital signature is made using a private key.” Claim 20 (“Functional Phrase #3” or “FP#3”).
For purpose of discussion below, FP#3 is broken into the following parts:
“client module” (“Introductory Phrase of FP#3);
“configured to” (“Linking Phrase of FP#3); and
“append a digital signature to a transaction request made to the web server over the communications network, wherein the digital signature is made using a private key” (“Function of FP#3”).
Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome.
Moreover, in assessing whether or not FP#3 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#3, but the entire FP#3 including the Function of FP#3.
Because the Function of FP#3 can be performed by conventional off-the-shelf software, a POSITA would understand that FP#3 connotes structure. Therefore, the Examiner concludes that FP#3 is not written in means-plus-function format because it would have connoted sufficiently definite structure to persons of ordinary skill in the art. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022).
CLAIM REJECTIONS – 35 USC § 251 (Original Patent Requirement)
The following is a quotation of the appropriate paragraphs of 35 USC § 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 2–10 and 12–21are rejected as failing to satisfy the original patent requirement of 35 USC § 251.
“[F]or broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; ‘[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.’ Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839 (emphasis added). Stated differently, the original patent ‘must clearly and unequivocally disclose the newly claimed invention as a separate invention.’ Antares, 771 F.3d at 1362.” Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351–1352 (Fed. Cir. 2019) (emphasis in original).
For the reasons that follow, the Examiner concludes that the Pending Claims of the Instant Application do not satisfy the original patent requirement because they do not comply with the standard set forth in Industrial Chemicals and Antares.
The Pending Claims include a method and system to facilitate online dating activities via identity verification. The claim amendments submitted in the January 2026 Response broaden originally patented claim 1 by removing the limitations (1) “client module configured for […] Encrypting the user contact information and the first and second images into an encrypted data packet using the private key [received from a web server]” (emphasis added) and (2) “a web server module executing on the web server […], the web server module configured for […] decrypting the encrypted data packet using the public key [corresponding to the private key].” See original patent claim 1.
The first limitation removed via the January 2026 Response, supra, is replaced with the limitation “client computing device configured to receive data from a user to create a user profile, wherein the data from the user comprises user contact information entered via the client computing device, a first image of the user’s face taken via a camera on the client computing device, and a second image of the user’s identification card taken via a camera on the client computing device, wherein the data from the user is encrypted using a public key transmitted from a web server.” See new claim 20 (emphasis added).
Moreover, the second limitation removed via the January 2026 Response, supra, is replaced with the limitation “the web server comprises a web server module configured […] to decrypt the encrypted data using the private key” (new claim 20; emphasis added), where the “private key” is also used to make a digital signature that is appended to a transaction request by the client module (see new claim 20, i.e., “wherein the client computing device comprises a client module configured to append a digital signature to a transaction request made to the web server over the communications network, wherein the digital signature is made using a private key”).
First, however, upon review of the original '316 Patent, the Examiner finds that the '316 patent does not disclose an embodiment of the invention where the data from the user, to create a user profile, is encrypted using a public key transmitted from a web server, as now claimed, supra. And second, upon review of the original '316 Patent, the Examiner finds that the '316 patent does not disclose an embodiment of the invention where the data from the user, to create a user profile, is decrypted by the web server module using the private key used to make a digital signature that is appended to a transaction request by the client module, as now claimed, supra.
Therefore, the above noted broadening results in claim 20 now reciting an invention that does not comply with the Original Patent Requirement of 35 USC § 251. Therefore, claim 20 (and its dependent claims) is rejected under 35 USC § 251. New method claim 21 recites limitations similar to those discussed above with respect to claim 20, and therefore claim 21 (and its dependent claims) is also rejected under 35 USC § 251.
CLAIM REJECTIONS – 35 USC § 251 (New Matter)
Claims 2–10 and 12–21 are rejected under 35 USC § 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described below in § CLAIM REJECTIONS – 35 USC § 112(a).
CLAIM REJECTIONS – 35 USC § 112(a)
The following is a quotation of 35 USC § 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.
Claims 2–10 and 12–21 are rejected under 35 USC § 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
New Matter
Claim 20 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “client computing device configured to receive data from a user to create a user profile, wherein the data from the user comprises user contact information entered via the client computing device, a first image of the user’s face taken via a camera on the client computing device, and a second image of the user’s identification card taken via a camera on the client computing device, wherein the data from the user is encrypted using a public key transmitted from a web server” (new claim 20; emphasis added) and “the web server comprises a web server module configured […] to decrypt the encrypted data using the private key” (new claim 20; emphasis added), where the “private key” is also used to make a digital signature that is appended to a transaction request by the client module (see new claim 20, i.e., “wherein the client computing device comprises a client module configured to append a digital signature to a transaction request made to the web server over the communications network, wherein the digital signature is made using a private key”).
First, the '316 Patent discloses “Subsequently, in step 304, the server 102 transmits, such as via an HTTP request, a private key (via data packet 202) to the device 111 of user 111a via the network 106. The device 111 of user 111a receives said private key and utilizes it to encrypt the data entered by the user, namely, user contact information, a first image of the user’s face, a second image of the user’s identification card. The encrypting step results in an encrypted data packet. In step 306, the client module is configured for transmitting said encrypted data packet (via data packet 204), such as via an HTTP request, to server 102 for identity verification.” C6:L61–C7:L4. However, in this disclosure, it is a private key that is transmitted to the client from the server, not a public key (as now claimed).
Second, the '316 Patent discloses “In step 308, the server processes the encrypted data packet by unencrypting the data packet using a public key that corresponds to the private key that was sent to the client earlier.” C7:L13–16. However, in this disclosure, it is a public key that is used by the server to decrypt the user data, not a private key (as now claimed), let alone a private key that is used to make a digital signature that is appended by the client to a transaction request (also, as now claimed).
Dependent claims 2–10 fail to cure this deficiency of independent claim 20 (set forth directly above) and are rejected accordingly.
Claims 12–19 and 21 contain language similar to claims 2–10 and 20 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 12–19 and 21 are also rejected under 35 USC § 112 as failing to comply with the written description requirement.
CLAIM REJECTIONS – 35 USC § 112(b)
The following is a quotation of 35 USC § 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.
Claims 2–10 and 20 are rejected under 35 USC § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Insufficient Disclosure Of Corresponding Structure
As noted above, FP#1 invokes 35 USC § 112(f). See above section titled “FUNCTIONAL PHRASES INVOKING 35 USC § 112(f).”
However, for FP#1, the Original Disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See above subsection titled “Corresponding Structure for Functional Phrase #1” for an explanation of why the Original Disclosure does not include the corresponding structure. Therefore, claims 2–10 and 20 are indefinite and are rejected under 35 USC § 112(b).
Conclusion of 35 USC § 112(b) Rejection
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 2–10 and 20 are indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant, and the claim limitation can then then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art.
ALLOWABLE SUBJECT MATTER
Claims 2–10 and 20 would be allowable if rewritten or amended to overcome the rejection under 35 USC § 112(b) set forth in this Office action. Also note that, while the Pending Claims are indicated as allowable, the Pending Claims are subject to other rejections under 35 USC §§ 112(a) and 251, supra.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to system claims 2–10 and 20, none of Caplovitz, Pancholi, Harrisville-Wolff, Harlow, or Aull, alone or in combination, disclose, teach, and/or fairly suggest the algorithmic structure required by Functional Phrase #2. See above section titled “Corresponding Structure for Functional Phrase #2” for the particular algorithmic structure required by claims 2–10 and 20. Furthermore, with respect to method claims 12–19 and 21, Applicant previously argued “The cited references do not teach using a private key to encrypt the user’s verification data prior to verification, and then using that same key to for verify transactions.” January 2025 Response at page 18 (emphasis added). Claim 21 also requires “transmitting, by a web server module […], the private key to the client computing device over the communications network.” This additional step requires transmission of the private key (i.e., issuance of the key) necessarily prior to the encrypting using that key (assuming Applicant amends the claim to overcome the 112/251 rejections by changing public key back to private key). However, the prior art of Harrisville-Wolff only teaches to encrypt user data with an issued private key after verification of the user (at least [0018]). Therefore, since the claimed order of steps produces a new result (e.g., issuance of a private key to a user and data encryption using the private key before verifying the user), the claimed order of steps distinguish claims 12–19 and 21 from the prior art of record, as previously argued by Applicant.
CONCLUSION
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most definitions are cited because these terms are found in the claims, the Examiner may have provided an additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves, the prior art, or the Patent Under Reissue.
2 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”
3 Microsoft Computer Dictionary (5th ed. 2002) (Microsoft Press); The American Heritage Dictionary of the English Language (5th ed. 2011).
4 Through antecedent basis, the phrase “the digital signature” refers to the previous phrase “a digital signature […], wherein the digital signature is made using a private key.”
5 Microsoft Computer Dictionary (5th ed. 2002) (Microsoft Press); The American Heritage Dictionary of the English Language (5th ed. 2011).