DETAILED ACTION
Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is in response to an amendment dated March 19, 2025. Claims 11-12 are canceled. Claims 1- 10 and 13-14 are pending. All pending claims are examined.
Response to Arguments
101 Rejection Analysis
101 Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
“ In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
[Claim 13] A digital asset management method comprising:
registering agent information of an agent with respect to member information of a member having an account, wherein the agent information comprises information of a relationship between the member and the agent, and biometric information of the agent;
transmitting a confirmation notice to the member at least a predetermined time period set automatically
transmitting an agent notice to the based on there being no member response from the member in response to the confirmation notice;
controlling authentication of the agent based on there being
giving the agent authority related to a digital asset of the member based on the authentication being successful.
2A, Prong One, Taking the broadest reasonable interpretation, the invention is directed to the abstract idea of certain methods of organizing human activity that is a commercial or legal interaction. This entails identity verification or and authentication of a party (App. Spec. para. 0062-0069; Fig. 2) and their relationship to the asset they are interested in gaining access to.
The innovation as claimed appears to be directed to the user’s objective of using the previously existing information to compare against a submitted request to evaluate the identity of the requesting party to gain access to an asset. Evaluating received information against the existing data as recited in the claims are nothing more than gathering data and applying a set of instructions to the data.
2A Prong Two
Beyond the abstract idea, the additional elements recite hardware components such as a computer and processor, there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. (See App. Spec. para. 0196 – “ FIG. 18 is a block diagram illustrating a hardware configuration of a computer 900 that implements the authentication apparatus 100 or the like. The computer 900 may be a dedicated computer designed to achieve the authentication apparatus 100 or the like, or may be a general-purpose computer. The computer 900 may be a portable computer such as a smartphone and a tablet terminal.”) Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Unlike, McRO, the present claims contain improvements to the context in which the authentication of the agent are determined and not one of a technology or technological field.
Absent is any support for the claims as recited
A digital asset management method comprising:
registering agent information of an agent with respect to member information of a member having an account, wherein the agent information comprises information of a relationship between the member and the agent, and biometric information of the agent;
transmitting a confirmation notice to the member at least a predetermined time period set automatically
as an improvement to the computer or technical field beyond automating the process of identifying agents to the transaction that can be granted access where the authentication process is successful .
In particular, there is a lack of improvement to a computer or technical field of authentication because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional elements are computer and processor (see App. Spec. para. 0196, see also paras. 0075-0080) which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
The data analysis is without meaningful limitations within the claims and this does not amount to significantly more than a judicial exception (i.e. abstract idea),
Likewise, the dependent claims 2-10 are rejected under 35 U.S.C. § 101. For example, claims 2-4 which describes different types off details about the different parties to the transaction including factors used in the identity verification process. These claim limitations recite steps at a high level of generality and performed in a traditional manner and therefore do not integrate the abstract idea into a practical application or provide an inventive concept.
Independent claims 1, 13 and 14 are rejected under 35 U.S.C. § 101 including dependent claims 2-10 which fall with claims 1, 13 and 14. Therefore, claims 1-20 are not patent eligible under 35 USC 101.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 and 13-14. are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Claim 13: Ineligible
Claims 1-10 and 13-14. are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim recites the abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter. For claim 13, the claim recites an abstract idea of agent registration.
The Independent claims are 1 and 13-14. For this analysis and illustration purposes; claim 13 recites:
[Claim 13] A digital asset management method comprising:
registering agent information of an agent with respect to member information of a member having an account, wherein the agent information comprises information of a relationship between the member and the agent, and biometric information of the agent;
transmitting a confirmation notice to the member at least a predetermined time period set automatically
transmitting an agent notice to the based on there being no member response from the member in response to the confirmation notice;
controlling authentication of the agent based on there beingan agent response from the agent in response to the agent notice; and
giving the agent authority related to a digital asset of the member based on the authentication being successful.
The invention describes steps a user would take in registration and authentication of a user requesting access.
This is an abstract idea of a certain method of organizing human activity, namely receiving and verifying information for registering an agent.
Limitations a-e describe the steps of evaluating data submitted by a prospective applicants. Moreover, limitations a-e collectively describes mental steps that could be performed in the human mind or by a human using pen and paper to evaluate received data and making a determination based on the analysis.
The Revised Guidance explains that “mental processes” include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“if a claim, under its reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”).
The registering, transmitting, transmitting, controlling and giving steps could be performed by a human remembering the information analyzed to make the determination of a result. It can also be considered a mental process practically with the human mind since it entails making evaluations of data albeit with the help of a computer.
Besides reciting the abstract idea, the remaining claim limitations recite generic components (processor in independent claim 1 - see App. Spec. paras 0196; Figs. 3-4 and 7; paras. 0071-0076). This suggests generic components to receive and analyze information received against information in the database. The nature of the claim as a whole does not define a specific technological improvement but merely recites the steps necessary to perform the abstract idea in which the computers are invoked merely as a tool.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
The claim does not include additional elements (see processor) that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements - (e.g. computer – App. Spec. para. 0196 – “FIG. 18 is a block diagram illustrating a hardware configuration of a computer 900 that implements the authentication apparatus 100 or the like. The computer 900 may be a dedicated computer designed to achieve the authentication apparatus 100 or the like, or may be a general-purpose computer. The computer 900 may be a portable computer such as a smartphone and a tablet terminal’; see also para. 0075) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Further, the dependent claims 2-10, for example claims 2-5 describe how the data transmitted is handled and additional descriptive details about the criteria or rules applied to the evaluation of the request for authentication, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic components (e.g. see para. 0071-0075 general-purpose computer) to evaluate the submitted data based on predefined conditions.
The dependent claims provide additional descriptions of the components/elements of the claimed invention in a manner that merely refines and further limits the abstract idea of independent claims 1 and 13-14 and do not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the dependent claims are patent-ineligible.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-10 and 13-14 are not patent eligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sharma, USP Pub. No. 20210377043 (Systems and Methods for Provisioning Credentials)
Levitt, USP Pub. No. US 20200389450 (Systems and Methods for Holistic Digital Identity)
THIS ACTION IS MADE FINAL. 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.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019