DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to Applicant’s RCE filed July 22, 2026 in which claims 5-14 and 19-28 are cancelled. Claims 29-40 are added. Claims 1-4 and 15-18 were previously canceled. Thus, claims 29-40 are pending in the application.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/22/2026 has been entered.
Claim Objection
3. Claims 29 and 39 are objected to because of the following :
Claim 29 recites : “if the enrollment status is active, generating by the user device a first subsequent biometric probe from the first subsequent biometric sample.” It is unclear if “the enrollment status” is referring to the previously recited “biometric enrollment status”. This limitation lacks antecedent basis. Appropriate clarification is required.
Claim 39 recites : “wherein a trust event extends trust to the first unverified biometric reference that was used to form the second biometric template.” It is unclear if “the first unverified biometric reference” is referring to the previously recited “an unverified biometric reference”. This limitation lacks antecedent basis. Appropriate clarification is required.
Claim Rejections - 35 USC § 101
4. 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 29-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The Examiner has identified independent system Claim 29 as the claim that represents the claimed invention for analysis and is similar to independent Claims 34 and 36.
The claims 29-33 are directed to a method and claims 34-40 are directed to a system which are one of the statutory categories of invention (Step 1: YES).
The claim 29 recites : initiating a first contactless transaction between the user device and a host device; capturing a first biometric sample by the user device during the first contactless transaction; determining by the user device a biometric enrollment status of a user based on information stored on the user device; if the biometric enrollment status is active, generating by the user device a first biometric probe from the first biometric sample and storing on the user device the first biometric probe as a biometric reference in a first biometric template; capturing a first subsequent biometric sample by the user device during a first subsequent contactless transaction between the user device and the host device; determining by the user device the biometric enrollment status of the user based on information stored on the user device; if the enrollment status is active, generating by the user device a first subsequent biometric probe from the first subsequent biometric sample; comparing by the user device the first subsequent biometric probe to the biometric reference in the first biometric template and if the first subsequent biometric probe matches the biometric reference in the first biometric template, storing the first subsequent biometric probe as a first subsequent biometric reference in the first biometric template; and comparing by the user device the first subsequent biometric probe to the biometric reference in the first biometric template and if the first subsequent biometric probe does not match the biometric reference in the first biometric template, generating by the user device a second biometric template in which to store the first subsequent biometric probe as a first unverified biometric reference. These limitations (with the exception of italicized portions), under their broadest reasonable interpretation, are a process that covers Certain methods of organizing human activity such as fundamental economic principles or practices (including insurance, mitigating risk, and hedging). Verifying enrollment status for user authentication can be characterized as a Fundamental Economic Practice. The claim also recites a host device and a user device which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, a host device and a user device, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim 29 recites an abstract idea (Step 2A: Prong 1: YES).
This judicial exception is not integrated into a practical application. The additional elements of a user device and a host device result in no more than simply applying the abstract idea using generic computer elements. The specification describes the additional elements of a user device and a host device to be generic computer elements (see Fig. 1, [00118]). Hence, the additional elements in the claim are generic components suitably programmed to perform their respective functions. The additional elements of a user device and a host device are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application. Therefore, the claim 29 is directed to an abstract idea (Step 2A - Prong 2: NO).
The claim 29 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component (MPEP 2106.05(f)). The additional elements, when considered separately and as an ordered combination, does not add significantly more (also known as an “inventive concept”) to the exception. The additional elements of the instant underlying process, when taken in combination, together do not amount to significantly more than the sum of the functions of the elements when each is taken alone. Thus, claim 26 is not patent eligible (Step 2B: NO).
Similar analysis can he extended to other independent claims 34 and 36 and hence the claims 34 and 36 are rejected on similar grounds as claim 29. In addition, claims 34 and 36 also recite a biometric sensor, a processor, the system and a memory which amounts to generic computer implementation.
Dependent claims 30-33, 35 and 37-40 are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations narrow the abstract idea further and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Dependent claims 30-33, 35 and 37-40 do not recite any new additional elements that are not present in independent claims 29, 34 or 36.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as a combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 29-40 are ineligible.
No Prior Art Rejections
5. Based on the prior art search results, the prior art of record fails to anticipate or render obvious the claimed subject matter of claims 29-40. While some individual features of claims 29-40 may be shown in the prior art of record, no known reference, alone or in combination, would provide the invention of claims 29-40. The prior art most closely resembling the applicant’s claimed invention are:
1) Wong (US 2021/0035109 A1) – This invention relates generally to methods, apparatus and systems for securely and conveniently enrolling consumer biometric data into a biometric payment card, and methods concerning subsequent use of the biometric payment card. More specifically, in some embodiments a user is provided with a biometric payment card and then enrolls his or her fingerprints during a first purchase transaction directly into the biometric payment card for use in future purchase transactions. Fingerprint template data obtained from the consumer during one or more subsequent purchase transactions with the biometric payment card may then be used to refine, modify or replace the initial biometric enrollment data.
2) Morris (US 2013/0318359 A1) – This invention relates generally to systems and methods for verifying uniqueness in anonymous authentication. The method includes obtaining biometric data. The method also includes generating a token. The method also includes blinding the token to produce a blinded token. The method also includes sending the blinded token and biometric information based on the biometric data to a verifier. The method also includes receiving a signature of the blinded token from the verifier if corresponding biometric information is not stored by the verifier.
3) Smith (US 2014/0282945 A1) – This invention relates generally to technologies for securely storing and using biometric authentication information. In general, the biometric authentication technology described herein leverages the use of biometric information that is stored in one or more templates on a client device. The client device may be a mobile or other electronic device that may remain under the control of a user that is the subject of the authentication, or a trusted third party.
4) Cornick (US 2019/0186077 A1) – This invention relates generally to biometric security systems that provide an enhanced defense against fraudulent use of an individual's identity to complete a transaction. The method includes receiving in an identity verification system biometric data obtained from a user desiring to initiate a financial electronic transaction and obtaining stored biometric data associated with the user from memory. The received biometric data is compared with the obtained biometric data to confirm a match so as to generate a Return Session ID Token configured to authorize the desired financial transaction in a financial transaction system.
Examiner Request
6. The Applicant is request to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. §112(a) or §112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BHAVIN D SHAH whose telephone number is (571)272-2981. The examiner can normally be reached on 8:00-5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BHAVIN D SHAH/Examiner, Art Unit 3694
August 21, 2026
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