DETAILED ACTION
Claims 16-34 are currently pending.
The rejections to claims 17 and 27 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn due to Applicant’s amendment.
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered but they are not persuasive.
The Applicant argues on pages 8-9 of the response in essence that: Subramaniam does not specifically teach step (h), namely (emphasis added) "obtaining, based on authentication of the at least one signatory using the digital signing device, signatory information unique to the at least one signatory using the digital signing device". In effect, no particular authentication of each signatory is contemplated in Subramaniam with a view to obtain the relevant "signatory information" that is unique to each signatory. Subramaniam merely teaches (see paragraph [0047] and step 515 of Figure 5) that "when the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party" and, more specifically, that "the digital pen may take one or more digital photographs of the handwritten signature and save them as a holographic signature". This "holographic signature" is not in any way exploited for the purpose of authenticating the signatory and obtaining the relevant "signatory information", as recited in step (h) of independent claim 16. Rather, the "holographic signatures" are merely associated to each relevant contract signature field and, once the signature/field associations are established, are appended to the associated e-contract document (see Subramaniam, paragraph [0048] and step 535 of Figure 5).
Subramaniam discloses that the signatures may be affixed in such a way that the date and time of each signature capture, as well as the authenticity of each unique signature is embedded in the e-contract (paragraph 43).
Claim Rejections - 35 USC § 102
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 16, 17, 23, 26, 28, 29 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Subramaniam et al. US Publication 2009/0157538 (hereafter “Subramaniam”).
Referring to claim 16, Subramaniam discloses a process of signing documents comprising the following steps:
(a) generating a document identification from a digital copy of a document to be signed by at least one signatory (paragraph 46, In another example embodiment, contract identification information, such as contract identifier and one or more signature identifiers, may be embedded in the designated locations in the printed contract document);
(b) encoding the document identification into one or more watermarks (paragraph 46, In another example, the contract and signature identifiers may be embedded into the contract document as unique dot patterns, barcodes or numeric sequences);
(c) producing a hard copy of the document to be signed incorporating the one or more watermarks (paragraph 46, The dealer may then print all documents in the EC package and provide them to the customer for review, step 505);
(d) reading the one or more watermarks provided on the hard copy of the document using an optical reader device (paragraph 47, In addition, the pen may be used to capture contract identifier, which may be located in a margin of the document or as a barcode to be scanned by the pen);
(e) decoding the document identification encoded into the one or more watermarks read by the optical reader device (paragraph 48, The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures);
(f) associating the hard copy of the document to be signed to the digital copy of the document to be signed based on the decoded document identification (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535);
(g) signing of the hard copy or the digital copy of the document by the at least one signatory using a digital signing device (paragraph 47, When the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party, step 515);
(h) obtaining, based on authentication of the at least one signatory using the digital signing device, signatory information unique to the at least one signatory using the digital signing device (paragraph 48, When the digital pen in docked in the base unit, the captured holographic signatures and signature identification information may be transferred to the e-contracting application for processing, step 525. The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures); and
(i) generating a digital signature of the digital copy of the document based on the decoded document identification and the signatory information, and applying the digital signature to the digital copy of the document to produce a digitally signed copy of the document (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535).
Referring to claim 17, Subramaniam discloses involving signature of the document by multiple signatories, wherein the digital signature, or any derivative thereof, of the digitally signed copy of the document signed by a previous signatory is used as document identification for subsequent signature of the document by at least one further signatory, or
wherein the document identification is used for signature by all signatories and the digital signature of the digitally signed copy of the document is generated on a basis of concatenated signatory information of all signatories (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535).
Referring to claim 23, Subramaniam discloses wherein the digital signing device is a user authentication device, a smartcard reader device or a biometric recognition device (paragraph 47, When the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party, step 515. For example, the digital pen may take one or more digital photographs of the handwritten signature and save them as a holographic signature).
Referring to claim 26, Subramaniam discloses wherein the one or more watermarks is or include a signing area watermark that is provided in a signing area of the hard copy of the document (paragraph 22, The signature identifier may be a unique number used to associate the captured signature with a particular signature field within the specific electronic contract).
Referring to claim 28, Subramaniam discloses wherein one or more sensitive area watermarks are further provided in one or more sensitive areas of the hard copy of the document (paragraph 22, The signature identifier may be a unique number used to associate the captured signature with a particular signature field within the specific electronic contract. The signature identifiers may be placed into or next to the associated signature fields [there are multiple signature identifiers and one specific signature identifier can be considered a sensitive area watermark]).
Referring to claim 29, Subramaniam discloses wherein each watermark is position-dependent to prevent replication of the watermark in other areas of the hard copy of the document (paragraph 23, In one example embodiment, a special digital paper may be used to print contract documents. Digital paper is patterned paper used in conjunction with a signature capture devices, such as a digital pen, to create handwritten digital documents. The printed dot pattern uniquely identifies the position coordinates on the paper).
Referring to claim 32, Subramaniam discloses wherein step (f) includes checking authenticity of the document to be signed based on the decoded document identification (paragraph 48, The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures).
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, 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 18-22, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Subramaniam et al. US Publication 2009/0157538 and Shaked et al. US Publication 2021/0006411 (hereafter “Shaked”).
Referring to claim 18, Subramaniam discloses a process of signing documents comprising the following steps:
(a) generating a document identification from a digital copy of a document to be signed by at least one signatory (paragraph 46, In another example embodiment, contract identification information, such as contract identifier and one or more signature identifiers, may be embedded in the designated locations in the printed contract document);
(b) encoding the document identification into one or more watermarks (paragraph 46, In another example, the contract and signature identifiers may be embedded into the contract document as unique dot patterns, barcodes or numeric sequences);
(c) producing a hard copy of the document to be signed incorporating the one or more watermarks (paragraph 46, The dealer may then print all documents in the EC package and provide them to the customer for review, step 505);
(d) reading the one or more watermarks provided on the hard copy of the document using an optical reader device (paragraph 47, In addition, the pen may be used to capture contract identifier, which may be located in a margin of the document or as a barcode to be scanned by the pen);
(e) decoding the document identification encoded into the one or more watermarks read by the optical reader device (paragraph 48, The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures);
(f) associating the hard copy of the document to be signed to the digital copy of the document to be signed based on the decoded document identification (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535);
(g) signing of the hard copy or the digital copy of the document by the at least one signatory using a digital signing device (paragraph 47, When the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party, step 515);
(h) obtaining, based on authentication of the at least one signatory using the digital signing device, signatory information unique to the at least one signatory using the digital signing device (paragraph 48, When the digital pen in docked in the base unit, the captured holographic signatures and signature identification information may be transferred to the e-contracting application for processing, step 525. The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures); and
(i) generating a digital signature of the digital copy of the document based on the decoded document identification and the signatory information, and applying the digital signature to the digital copy of the document to produce a digitally signed copy of the document (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535),
wherein the optical reader device and the digital signing device are one and a same optical pen or stylus device that is capable both of reading the one or more watermarks at step (d) and obtaining the signatory information at step (h) by extracting information unique to the at least one signatory's signature performed at step (g) (paragraph 47, When the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party, step 515).
Subramaniam does not disclose expressly extracting biometric information unique to the at least one signatory's signature.
Shaked discloses obtaining the signatory information at step (h) by extracting biometric information unique to the at least one signatory's signature performed at step (g) (paragraph 18-19, Applying a UC via at least certain SD embodiments, may require performing an identification process, possibly a preliminary stage of identification, to determine that a person handling the signing device (SD) is an authorized user (AU) of the SD. Such identification may possibly be performed via biometric identification, for example via fingerprint identification of a person handling the SD).
At the time of the invention, it would have been obvious to extract biometric information. The motivation for doing so would have been to allow confirming the identity of the signer to prevent unauthorized use of an individual’s identity. Therefore, it would have been obvious to combine well Shaked with Subramaniam to obtain the invention as specified in claim 18.
Referring to claim 19, Subramaniam discloses wherein signing of the document at step (g) is carried out on the hard copy of the document, and wherein the optical pen or stylus device is further capable of leaving an inked trace of the signatory's signature performed at step (g) on the hard copy of the document (paragraph 47, When the user uses the pen to sign paper copy of the contract, the pen is configured to capture a handwritten signature of the contracting party, step 515).
Referring to claim 20, Subramaniam discloses wherein signing of the document at step (g) is carried out on the hard copy of the document, and wherein a digital image of the signatory's signature performed at step (g) is applied onto the digitally signed copy of the document (paragraph 48, Once signature/field associations are established, the e-contracting application may append captured holographic signatures of contracting parties to the e-contract document in the EC package in the contract vault, step 535).
Referring to claim 21, Subramaniam discloses wherein a surface of the hard copy of the document is further provided with position-encoding patterns designed to allow position determination of the optical pen or stylus device with respect to the surface of the hard copy of the document, and
wherein the optical pen or stylus device is further configured to perform position determination of the optical pen or stylus device with respect to the surface of the hard copy of the document based on optical detection of said position-encoding patterns (paragraph 23, In one example embodiment, a special digital paper may be used to print contract documents. Digital paper is patterned paper used in conjunction with a signature capture devices, such as a digital pen, to create handwritten digital documents. The printed dot pattern uniquely identifies the position coordinates on the paper).
Referring to claim 22, Subramaniam discloses wherein the position-encoding patterns are printed along with the hard copy of the document at step (c) or are provided on blank paper used to print the hard copy of the document at step (c) (paragraph 23, In one example embodiment, a special digital paper may be used to print contract documents. Digital paper is patterned paper used in conjunction with a signature capture devices, such as a digital pen, to create handwritten digital documents. The printed dot pattern uniquely identifies the position coordinates on the paper).
Referring to claim 25, Shaked discloses wherein the biometric recognition device includes a fingerprint recognition device, a handwriting recognition device, a voice recognition device, a retina recognition device, or a face recognition device (paragraph 18-19, Applying a UC via at least certain SD embodiments, may require performing an identification process, possibly a preliminary stage of identification, to determine that a person handling the signing device (SD) is an authorized user (AU) of the SD. Such identification may possibly be performed via biometric identification, for example via fingerprint identification of a person handling the SD).
Referring to claim 27, Subramaniam discloses wherein the one or more watermarks is or include a signing area watermark that is provided in a signing area of the hard copy of the document (paragraph 22, The signature identifier may be a unique number used to associate the captured signature with a particular signature field within the specific electronic contract), and
wherein reading of the signing area watermark at step (d) and obtaining the signatory information at step (h) are carried out simultaneously using the optical pen or stylus device (paragraph 48, When the digital pen in docked in the base unit, the captured holographic signatures and signature identification information may be transferred to the e-contracting application for processing, step 525. The e-contracting application uses signature identification information, and, in particular, the captured contract identifier to locate in the contract vault an electronic contract associated with the captured holographic signatures).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Subramaniam et al. US Publication 2009/0157538 and Shaked et al. US Publication 2021/0006411 as applied to claim 23 above, and further in view of well known prior art.
Referring to claim 24, Subramaniam discloses the user authentication device, but does not disclose expressly wherein the user authentication device is a PIN-protected device.
Official Notice is taken that it is well known and obvious in the art to use a PIN-protected device (See MPEP 2144.03). The motivation for doing so would have been to prevent unauthorized users from operating the device. Therefore, it would have been obvious to combine well known prior art with Subramaniam to obtain the invention as specified in claim 24.
Claims 30, 31, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Subramaniam et al. US Publication 2009/0157538 as applied to claim 16 above, and further in view of well known prior art.
Referring to claim 30, Subramaniam discloses wherein any one of said one or more watermarks is printed on the hard copy of the document by means of an ink that is detectable by means of the optical reader device (paragraph 22, In another example, the contract and signature identifiers may be embedded into the contract document as unique dot patterns, barcodes, numeric sequences and the like, which may be captured by the signature capture device during contract execution).
Subramaniam does not disclose expressly wherein any one of said one or more watermarks is printed by means of an ink that is invisible to the naked eye.
Official Notice is taken that is well known and obvious in the art to print watermarks using invisible ink (See MPEP 2144.03). The motivation for doing so would have been to increase the visibility of the text intended to be read while increasing the security of the watermarked information. Therefore, it would have been obvious to combine well known prior art with Subramaniam to obtain the invention as specified in claim 30.
Referring to claim 31, Subramaniam discloses printing the one of said one or more watermarks with ink, but does not disclose expressly wherein the ink is a near-infrared (NIR) ink.
Official Notice is taken that is well known and obvious in the art to use near-infrared (NIR) ink (See MPEP 2144.03). The motivation for doing so would have been to increase the visibility of the text intended to be read while increasing the security of the watermarked information. Therefore, it would have been obvious to combine well known prior art with Subramaniam to obtain the invention as specified in claim 31.
Referring to claim 33, Subramaniam discloses the document identification (paragraph 46, In another example embodiment, contract identification information, such as contract identifier and one or more signature identifiers, may be embedded in the designated locations in the printed contract document), but does not disclose expressly wherein the document identification is based on or derives from a cryptographic hash function.
Official Notice is taken that it is well known and obvious in the art to use a cryptographic hash function in an identifier (See MPEP 2144.03). The motivation for doing so would have been to increase storage and processing efficiency. Therefore, it would have been obvious to combine well known prior art with Subramaniam to obtain the invention as specified in claim 33.
Referring to claim 34, Subramaniam discloses obtaining signatory information (paragraph 48, When the digital pen in docked in the base unit, the captured holographic signatures and signature identification information may be transferred to the e-contracting application for processing, step 525), but does not disclose expressly wherein step (h) includes obtaining a private encryption key unique to the at least one signatory.
Official Notice is taken that it is well known and obvious in the art to obtain a private encryption key unique to the at least one signatory (See MPEP 2144.03). The motivation for doing so would have been to allow confirming the identity of the signer. Therefore, it would have been obvious to combine well known prior art with Subramaniam to obtain the invention as specified in claim 34.
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 PETER K HUNTSINGER whose telephone number is (571)272-7435. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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/PETER K HUNTSINGER/Primary Examiner, Art Unit 2682