DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings are objected to because they include informalities. In Figure 5, element 530, it appears that “evalute” should read “evaluate”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The disclosure is objected to because of the following informalities:
It is noted that publications are referred to in paragraphs 0037, 0064, and 0066. It is unclear whether such publications are intended to be incorporated by reference or whether the subject matter referred to therein is required to provide clear definitions of the terms and/or functions described in the specification.
Appropriate correction is required. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 9 and 15 are objected to because of the following informalities:
In Claim 9, lines 3 and 5, the use of commas to set off “K1” and “K2” is inconsistent.
In Claim 15, line 4, it appears that a colon should be inserted after “including”.
Appropriate correction is required.
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.
A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. In particular, Claim 7 depends from Claim 3, but is separated from Claim 3 by Claims 4-6 which do not depend from Claim 3. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n).
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 15 does not fall within at least one of the four categories of patent eligible subject matter because the only structural elements required by the claim are a processor and a computer readable medium. The broadest reasonable interpretation of a processor covers a software process that performs various processing tasks, such as a virtual machine, and therefore, the processor encompasses software per se. Computer software does not fall within any of the statutory classes of invention. See Gottschalk v. Benson, 409 U.S. 63, 72, 175 USPQ 673, 676-77 (1972). Software does not constitute a statutory process, because the software itself is not a series of steps that are performed. Software is also not a machine, article, or composition of matter. Further, the broadest reasonable interpretation of a computer readable medium typically covers both forms of non-transitory media and transitory propagating signals per se in view of the ordinary and customary meaning of computer-readable storage media (for example, as defined by usage in issued patents and published patent applications), and the present application appears to include signals in its description of computer readable media (see paragraph 0111, for example). A signal does not constitute statutory subject matter, because it is neither a process, a machine, an article of manufacture, nor a composition of matter, and therefore does not fall within any of the statutory classes of invention. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007), and MPEP § 2106.03(I). See also “Subject Matter Eligibility of Computer Readable Media”, 1351 Off. Gaz. Pat. Office. Therefore, the claims encompass a combination of software and signals per se, each element of which can include non-statutory subject matter. When a claim encompasses both statutory and non-statutory subject matter, the claim as a whole is considered to be directed to non-statutory subject matter. See MPEP § 2106(II).
Claims 1, 4-6, and 8-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Claim 1 recites a method that includes receiving a user identifier, obscuring the user identifier with a function, transmitting the obscured identifier to first and second entity computers, receiving first and second outputs from the first and second entity computers, and generating a secret key after processing the first and second outputs. The steps of obscuring the user identifier with a function, processing the outputs, and generating a secret key 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 claim does not recite substantial further action after generating the secret key. The key is not used for anything. 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 user device and entity computers constitute nothing more than mere instructions to implement the abstract ideas on a computer. See MPEP § 2106.05(f). The steps of receiving the identifier and outputs constitute mere data gathering, which is insignificant extra-solution activity, as per MPEP § 2106.05(g), and the steps of transmitting the obscured identifier are similarly insignificant extra-solution activity. 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 identifier and outputs and transmitting the obscured identifier constitute sending and receiving data over a network, which have been recognized by the courts as well-understood, routine, and conventional functions. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs., and buySAFE. 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.
Similarly, Claim 16 recites a method that includes receiving an obscured user identifier and generating and transmitting a first output. 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 recited after generating the output is 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 outputs constitute mere data gathering, which is insignificant extra-solution activity, 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 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 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. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs., and buySAFE. 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.
Claim 15 is directed to a system having functionality corresponding to the method of Claim 1, and also recites an abstract idea for similar reasons as detailed above with respect to Claim 1. The recitations of the processor and computer readable medium storing code are at a generic level and constitute nothing more than mere instructions to implement the abstract idea on a computer. See MPEP § 2106.05(f). Therefore, the system claim is also not directed to significantly more than the abstract idea.
Dependent Claims 4-6, 8-14, and 17-20 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 1, 4-6, and 8-20 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.
It is noted that Claim 2 recites a function of encrypting data using the generated key and transmitting the encrypted data, which constitutes a practical application of the abstract ideas. Therefore, Claim 2, and Claims 3 and 7 depending therefrom, are not rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 112
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 1-20 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 1 recites “receiving, by a user device, a user identifier” in line 2. It is not clear from where this identifier is received. The claim further recites “wherein the first entity computer generates a first output after receiving the obscured user identifier, and the second entity computer generates a second output after receiving the obscured user identifier” in lines 10-13. It is not clear whether these generations are intended to be steps of the claimed method. These ambiguities render the claim indefinite.
Claim 3 recites “encrypted data” in line 3. It is not clear whether this is intended to refer to the same encrypted data as in Claim 2. Claim 3 further recites “the one or both first entity computer or the second entity computer” in lines 5-6. This is grammatically unclear and appears to be missing critical language, and further, the antecedent basis for this limitation is not clear.
Claim 4 recites “the first output comprises a first garbled circuit” in lines 1-2. It is not clear how a calculation would output a circuit.
Claim 8 recites “the first output is first share” in lines 2-3. It appears that an article (e.g. “the” or “a”) or other descriptor is missing before “first share”.
Claim 10 recites “the first output comprises a first garbled circuit” in line 5 and “the second output comprises a second garbled circuit” in line 6. It is not clear how a calculation would output a circuit.
Claim 15 recites “receiving a user identifier” in line 5. It is not clear from where this identifier is received. The claim further recites “wherein the first entity computer generates a first output after receiving the obscured user identifier, and the second entity computer generates a second output after receiving the obscured user identifier” in lines 11-14. It is not clear whether these generations are intended to be steps of the claimed method. These ambiguities render the claim indefinite.
Claim 16 recites “wherein the user device also transmits the obscured user identifier to a second entity computer” in lines 4-5, “wherein the second entity computer generates a second output after receiving the obscured user identifier” in lines 8-9, and “wherein the user device generates a secret key after processing the first output and the second output” in lines 11-12. It is not clear whether these limitations are intended to be steps of the claimed method. These ambiguities render the claim indefinite.
Claim 18 recites “the first output comprises a first garbled circuit” in lines 1-2. It is not clear how a calculation would output a circuit.
Claim 20 recites “the function is an oblivious transfer function” in lines 1-2. However, such a function does not appear to be defined or clearly mentioned in the specification.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agrawal et al, WIPO Publication 2020/072882.
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).
In reference to Claims 2 and 3, Agrawal further discloses encrypting and transmitting data, and receiving and decrypting data (see paragraph 0072, for example).
In reference to Claims 4, 5, 10, and 11, Agrawal further discloses that the user identifier is a biometric template and the first and second outputs are garbled circuits (paragraph 0059, for example, biometric; paragraph 0064, for example, garbled circuit).
In reference to Claims 6, 8, and 9, Agrawal further discloses a password and an encoded password (for example, see paragraph 0192) and shares of the user identifier (see paragraph 0061).
In reference to Claim 7, Agrawal further discloses a threshold oblivious pseudorandom function (paragraph 0082, for example).
In reference to Claim 12, Agrawal further discloses a mobile phone (see paragraph 0351).
In reference to Claims 13 and 14, Agrawal further discloses a key recovery process and setup (see paragraphs 0179 and 0182, for example).
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 16-20 are directed to a method reciting the corresponding functions of the first entity computer as recited in Claims 1 and 4-7, and are rejected by a similar rationale, mutatis mutandis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Patey et al, US Patent 9729548, discloses a process of biometric identification using multipart calculation and oblivious transfer.
Resch et al, US Patents 10700859 and 10841081, discloses computation of a threshold partially oblivious pseudorandom function.
Carmignani et al, US Patent 11101986, discloses a system using a garbled circuit with biometric inputs using oblivious transfer.
Herder, III et al, US Patent 11343099, discloses oblivious transfer and garbled circuits for processing biometric data.
Mohassel et al, US Patent 11509478, discloses password based threshold token generation.
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.
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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