DETAILED ACTION
A response was received on 27 May 2026. By this response, Claims 1, 3, 4, 8-10, 15, 16, 18, and 20 have been amended. Claim 2 has been canceled. New Claim 21 has been added. Claims 1 and 3-21 are currently pending in the present application.
Response to Arguments
Applicant’s arguments with respect to the rejection of Claims 1-20 under 35 U.S.C. 102 (pages 17-20 of the present response) have been considered but are moot in view of the new grounds of rejection set forth below.
Applicant's arguments filed 27 May 2026 have been fully considered but they are not persuasive.
Regarding the rejection of Claims 16-20 under 35 U.S.C. 101 as directed to abstract ideas without significantly more, and with particular reference to amended Claim 16 in the analysis of Step 2A, Prong One, Applicant argues that the method involves the receipt and processing of obscured user identifiers, generation of outputs by separate computers, and the generation and use of a secret key for encryption and secure storage of data, and that these are not mental processes or mathematical calculations performed in the abstract but are technical processes that cannot be performed in the human mind or with pen and paper (page 12 of the present response). First, however, it is noted that no mental process was identified in the claims; rather, the identified abstract ideas were in the grouping of mathematical concepts. Further, the test of Prong One is not whether the claims require particular hardware or protocols, for example, but whether the claim recites an abstract idea. Here, the step of generating an output is implemented by mathematical calculations (see paragraphs 0044 and 0058, outputs generated by an evaluation function of a threshold oblivious pseudorandom function) which falls into the abstract idea grouping of mathematical concepts as set forth in MPEP § 2106.04(a)(2). Therefore, the claim recites an abstract idea in the meaning of Prong One.
With reference to Step 2A, Prong Two, Applicant argues that the claim is directed to a “specific, technical process” and is not a mere abstraction because it imposes “specific structural and functional requirements” that are alleged to improve data security and integrity in distributed computing environments that allegedly integrate the judicial exception into a practical application that advances the technical field of secure authentication and storage (pages 13-14 of the present response). Although Applicant points to paragraph 0086 of the specification and argues that the claims provide a clear technical advantage by enabling secure recovery of encrypted data (pages 14-15 of the present response, citing paragraph 0086), Applicant does not explain the nexus of how any of the claim limitations are considered to provide the asserted advantage. Although Applicant asserts that the claims enable secure recovery, there is no mention of recovery of data in Claim 16. Further, although Applicant asserts that “the method generates a secret key… and then uses that key to encrypt and store sensitive information” (page 14 of the present response), it is noted that there is no positive recitation of generating of the key or encrypting sensitive information by the first entity computer that performs the method of Claim 16; rather, the key generation and encryption occur outside of the claimed method. There is not clear nexus between the asserted advantage and actual, positively-recited active steps of the method of Claim 16. The steps of receiving the obscured identifier and receiving the encrypted data constitute mere data gathering, which is insignificant extra-solution activity, as per MPEP § 2106.05(g). Similarly, the steps of transmitting the output and storing the encrypted data are also insignificant post-solution activity, as per MPEP § 2106.05(g). Therefore, the judicial exception is not integrated into a practical application.
With reference to Step 2B, Applicant argues that the arrangement of the claim, which is asserted to require to entity computers receiving an identifier and independently generating outputs and cooperating with a user device to generate a key used to encrypted data that is received and stored, is not conventional or routine (page 15 of the present response). However, first, Claim 16 only positively recites steps that are performed by the first entity computer; any steps performed by the second entity computer and user device are not active steps that are positively required to be performed in the claimed method. Further, this appears to misapprehend the test of MPEP § 2106.05(d) relating to well-understood, routine, and conventional activity, which considers whether individual elements additional to the abstract idea are well-understood, routine, and conventional activities. The steps of receiving and transmitting data only appear to require receiving and transmitting data in a generic and conventional manner; the claim only requires that particular data is received or transmitted but places no limit on the manner in which such data is received or transmitted. Therefore, the steps of receiving and transmitting data were considered to be well-understood, routine, and conventional functions, as recognized by the courts in the various court decisions that were cited from MPEP § 2106.05(d)(II). Although Applicant asserts that the additional steps of generating and storing encrypted data using the key provide a concrete, practical application that improves upon prior art approaches (page 15 of the present response), it is again noted that Claim 16 does not positively recite any generation of encrypted data as a step of the claimed method. Therefore, the claim as a whole, whether the steps are considered individually or as an ordered combination, is not directed to significantly more than the abstract idea.
Regarding the rejection of Claim 16 under 35 U.S.C. 112(b) as indefinite, Applicant asserts that the description of the user device and second entity computer allegedly follow the Beauregard claim format (page 16 of the present response); however, the claim is directed to a method rather than a computer program embodied on a computer-readable medium, and therefore, does not conform to a Beauregard-style claim. Further, Applicant asserts that computer software can be claimed according to In re Lowry and that the code is structural (page 16 of the present response). However, Lowry also considered computer-readable medium claims rather than method claims, which again, is not clearly relevant to Claim 16.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Drawings
The objection to the drawings for informalities is withdrawn in light of the amended drawings filed.
Specification
The objection to the disclosure is NOT withdrawn because the amendments have raised new issues, as detailed below.
The disclosure is objected to because of the following informalities:
The specification refers to publications in paragraphs 0037, 0064, and 0066. Because the publications are cited to provide definitions for terms, it appears that this is considered to be essential material as defined in 37 CFR 1.57(d). However, an incorporation by reference of essential material to a non-patent publication is improper under 37 CFR 1.57(d). See also MPEP § 608.01(p).
Appropriate correction is required. Applicant’s cooperation is again requested in correcting any other errors of which applicant may become aware in the specification.
The amendment filed 27 May 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Paragraphs 0037, 0064, and 0066 have been amended to recite that the cited publications “provide a clear definition” of the terms “threshold oblivious pseudorandom function”, “oblivious transfer protocols”, and “garbled circuits”, respectively. The narrowing of these definitions to those provided in the publications constitutes new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
The objection to Claims 9 and 15 for informalities is withdrawn in light of the amendments to the claims.
Claim Rejections - 35 USC § 101
The rejection of Claim 15 as directed to non-statutory subject matter is withdrawn in light of the amendments thereto. The rejection of Claims 1, 4-6, and 8-15 under 35 U.S.C. 101 as directed to abstract ideas is withdrawn in light of the amendments to the claims. The rejection of Claims 16-20 under 35 U.S.C. 101 is NOT withdrawn for the reasons detailed above in the response to arguments.
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 16-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Claim 16 recites a method that includes receiving an obscured user identifier and generating and transmitting a first output, as well as receiving and storing encrypted data. The step of generating the output can be implemented by mathematical calculations. These calculations constitute mathematical concepts, which are one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Abstract ideas are judicial exceptions as per MPEP § 2106.04(I). See also Alice Corporation Pty. Ltd. v. CLS Bank, International, et al, 573 U.S. 208, 110 USPQ2d 1976 (2014).
The judicial exception is not integrated into a practical application because the only step that subsequently uses the generated output is the step of transmitting the generated output. This constitutes necessary output of the abstract mathematical calculation and amounts to insignificant post-solution activity, as per MPEP § 2106.05(g). Similarly, the steps of receiving the identifier and encrypted data constitute mere data gathering, which is insignificant extra-solution activity, as per MPEP § 2106.05(g), and further, the step of storing the encrypted data is similarly insignificant post-solution activity, again as per MPEP § 2106.05(g). There is nothing that would result in a particular transformation, as per MPEP § 2106.05(c), nor does the claim require the use of the abstract ideas in conjunction with a particular machine or manufacture (noting that the user device and first and second entity computers are described in generic terms at a high level), as per MPEP § 2106.05(b). At most, the recitations of the first entity computer performing the steps constitute nothing more than mere instructions to implement the abstract ideas on a computer. See MPEP § 2106.05(f). There are no additional elements that apply or use the abstract ideas in a meaningful way beyond merely linking the use of the judicial exceptions to a particular technological environment. Therefore, the claim is not directed to a practical application of the abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exceptions for similar reasons as detailed above with respect to the question of a practical application of the judicial exception. The steps of receiving the obscured identifier and the encrypted data, as well as the step of transmitting the output, constitute sending and receiving data over a network, which have been recognized by the courts as well-understood, routine, and conventional functions. Similarly, the step of storing the encrypted data constitutes storing information in memory, which has also been recognized by the courts as a well-understood, routine, and conventional function. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs., buySAFE, and Versata. Therefore, the claim as a whole, whether the steps are considered individually or as an ordered combination, is not directed to significantly more than the abstract idea.
Dependent Claims 17-21 only recite further detail of the abstract steps such as further details of the mathematical functions or the inputs or outputs thereto. Therefore, the dependent claims also do not provide a practical application or significantly more than the abstract ideas.
Based upon consideration of all of the relevant factors with respect to the claims as an ordered combination and as a whole, Claims 16-21 are determined to be directed to abstract ideas without a practical application and without significantly more, as detailed above. Therefore, based on the above analysis, the claimed inventions are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
The rejection of Claims 1, 2, 4-6, and 8-15 under 35 U.S.C. 112(b) as indefinite is withdrawn (or moot) in view of the amendments to (or cancellation of) the claims. The rejection of Claims 3, 7, and 16-20 under 35 U.S.C. 112(b) is NOT withdrawn because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 7, and 16-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “at least one of first entity computer or the second entity computer” in lines 5-6. It is not clear whether this is intended to refer to the same one of the at least one of the first or second entity computers recited in lines 2-3; further, if it is not the same, then it is not clear how or why data would be received from an entity computer different from the one from which the data was requested.
Claim 16 recites “the second output received from the second entity computer” in line 12. Although the claim recites a second output, there is not clear antecedent basis for this more detailed limitation in the claim.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 3-21 are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal et al, WIPO Publication 2020/072882, in view of Carmignani et al, US Patent 11101986 (cited in the previous Office action).
In reference to Claim 1, Agrawal discloses a method that includes a user device receiving a user identifier unique to a user (Figure 4, step 408, obtain biometric; see also paragraph 0059); obscuring the user identifier with a function to form an obscured user identifier and transmitting the obscured user identifier to first and second entity computers (see paragraph 0060, biometric encrypted); receiving first and second outputs generated by the first and second entity computers without the first and second entity computers communicating with each other (paragraphs 0061-0062); and generating a secret key after processing the first and second outputs (paragraph 0063). However, although Agrawal also generally discloses encrypting data using a key (see paragraph 0072), Agrawal does not explicitly disclose encrypting the data using the generated key and transmitting the encrypted data to at least one of the first or second entity computers.
Carmignani discloses a method that includes generating a secret key after processing outputs generated by first and second entity computers (see column 29, lines 28-56, steps 312 and 314, generating keys), and encrypting data using the generated secret key and transmitting the encrypted data to at least one of the first or second entity computers (see column 13, line 31-column 15, line 10, where a biometric template is split into shares which are encrypted and transmitted). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Agrawal by including the encryption and transmission taught by Carmignani, in order to provide a way to authenticate a user’s biometrics in a distributed form (see Carmignani, column 17, lines 25-42).
In reference to Claim 3, Agrawal and Carmignani further disclose receiving and decrypting data (see Carmignani, column 15, lines 11-54; see also Agrawal, paragraph 0072).
In reference to Claims 4, 5, 10, and 11, Agrawal and Carmignani further disclose that the user identifier is a biometric template and the first and second outputs are data representing garbled circuits (Agrawal, paragraph 0059, for example, biometric; paragraph 0064, for example, garbled circuit; see also Carmignani, column 13, lines 19-30, biometric template, column 15, lines 11-54, garbled circuit).
In reference to Claims 6, 8, and 9, Agrawal and Carmignani further disclose a password and an encoded password (for example, see Agrawal, paragraph 0192) and shares of the user identifier (see Agrawal, paragraph 0061).
In reference to Claim 7, Agrawal and Carmignani further disclose a threshold oblivious pseudorandom function (Agrawal, paragraph 0082, for example).
In reference to Claim 12, Agrawal and Carmignani further disclose a mobile phone (see Agrawal, paragraph 0351; see also Carmignani, column 3, line 66-column 4, line 12).
In reference to Claims 13 and 14, Agrawal and Carmignani further disclose a key recovery process and setup (see Agrawal, paragraphs 0179 and 0182, for example; see also Carmignani, column 15, line 55-column 16, line 28).
Claim 15 is directed to a device having functionality corresponding substantially to the method of Claim 1, and is rejected by a similar rationale, mutatis mutandis.
Claims 16-21 are directed to a method reciting the corresponding functions of the first entity computer as recited in Claims 1 and 4-8, and are rejected by a similar rationale, mutatis mutandis.
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 Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
Examiner interviews are available via telephone 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, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
