DETAILED ACTION
This Office Action is in response to the application 18/726981, filed on 07/05/2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
As per the Preliminary Amendment filed on 04/08/2025, claims 78-97 are pending in this application, claims 78-82 has been elected for examination, claim 78 is independent.
Priority/Continuity
This application has continuity relationship with PCT Application No. PCT/GB2023/050020, filed on 01/06/2023, and foreign priority with Application No. GB2200192.9, filed on 01/07/2022.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 03/19/2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Election/Restrictions
In attempt to accelerate the prosecution process, the Examiner has contacted the Applicant, and conducted an interview on 10/14/2025 with Mr. Auito, Derek (Reg. No. 52,576) attorney of record, and discussed the Restriction/Election describing the following two species of claims, so that an oral election to the above restriction requirement could have been made by the Applicant.
On 10/15/205, Applicant’s representative, Mr. Auito, Derek, has elected claims 78-82, directed to the Group 1, for the instant examination.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
This application contains claims directed to the following groups, where the groups are lacking unity of invention:
Group I: Claims 78-82, is selected for Group 1, where the claims are directed to storing security code in a memory device, and process of deriving the security code.
Group II: Claims 83-89, 95, and 96, is selected for Group I, where the claims are directed to mechanical switch(s), and function and operation of the switch(s).
Group III: Claims 90-94, is selected for Group III, where the claims are directed to storing security code and process of deriving the security code.
Group IV: Claim 97, is selected for Group IV, where claim is directed to sections each comprising a mesh of conductive traces, and function and operation of it.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The special technical feature of Group I is “storing security code in a memory device, and process of deriving the security code”, Group II. The special technical feature of Group II is “mechanical switch(s), and function and operation of the switch(s), The special technical feature of Group III is “storing security code and process of deriving the security code”, The special technical feature of Group IV is “sections, each comprising a mesh of conductive traces, and function and operation of it”, and these special technical features are mutually exclusive.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
An Examiner Initiated Interview Summary, is attached addressing the election that was made on 10/15/2025.
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 78-82 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
As to claims 78, the claim cites, a system comprising system components, including a memory device that comprises a secret code being derived from biological and/or physiological characteristics of a user of the device, where the function step: “security code being derived from biological and/or physiological characteristics of a user of the device” along with refining limitations.
The limitations, in the context of these claims, encompasses the user manually performs the function steps. The limitations, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. Additional element of the function steps does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, Viewing the limitations in combination, also fails to amount to significantly more than the abstract idea. The addressed claimed functions, even with the additional limitations, reflect mental process steps, as would be recognized by those of ordinary skill in the field of data processing, and does not add significantly more to a judicial exception. Even considering, that the functions are performed by a claimed, security code being derived from biological and/or physiological characteristics, is generic computing functions that a person is able to conceptualize them mentally. Therefore, the claims are not patent eligible.
As to the dependent claims 79-82, the claims do not include additional steps/element that are sufficient to amount to significantly more to transform the abstract idea into patent-eligible subject matter. Therefore, these claims are also rejected under 35 USC 101 as being directed to non-statutory subject matter.
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 of this title, 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 78 and 80-81 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (“Hwang,” US 2012/0264401, published on 10/18/2012), in view of Khota (“Khota,” US 2004/0188520, published on 09/30/2004).
As to claim 78, Hwang teaches a security device (Hwang: pars 0010-0012, 0022; Fig. 2-4, an RIFID tag in communication with a user mobile device) comprising:
a memory device (Hwang: pars 0010-0012, 0022; Fig. 2-3, the RIFID tag comprises a storage to store an authentication code); and
one or more wireless communication modules (Hwang: pars 0044, 0048, 0050; Fig. 2-3, the RIFID tag contains includes an RFID communication unit for transmitting [i.e. wireless communication modules] the authentication code to the mobile device);
wherein the memory device comprises a physically encoded security code (Hwang: pars 0044, 0048, 0050; Fig. 2-3, the storage of the RFID tag stores the authentication code [i.e. security code]).
Hwang does not explicitly teach the security code being derived from biological and/or physiological characteristics of a user of the device.
However, in an analogous art, Khota teaches the security code being derived from biological and/or physiological characteristics of a user of the device (Khota: pars 0016, 0026, 0071, 0073; Fig 3, for performing user authentication process to allow user access, an electronic ticket [i.e., security code] information stored in the storage, such as an IC card, is transmitted to an authentication terminal. Where the electronic ticket information, incudes the user’s biological information, which indicates unique physical characteristics, such as a fingerprint and voiceprint).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Khota with the method/system of Hwang to include the limitation(s), the security code being derived from biological and/or physiological characteristics of a user of the device, where one would have been motivated for the benefit of providing a user with a means for using a biological information as a part of the security/authentication code for authenticating user with higher reliability and security (Khota: pars 0016, 0026, 0071, 0073).
As to claim 80, the combination of Hwang and Khota teaches the security device of claim 78,
Khota further teaches in which the security code is derived from biological and/or physiological characteristics of the user (Khota: pars 0016, 0026, the electronic ticket is created using the user’s biological information, which indicates unique physical characteristics, such as a fingerprint and voiceprint).
As to claim 81, the combination of Hwang and Khota teaches the security device of claim 78,
Khota further teaches in which the security code is derived from biometric data of the user (Khota: pars 0016, 0026, the electronic ticket is created using the user’s biological information, which indicates unique physical characteristics, such as a fingerprint and voiceprint).
Claims 79 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (“Hwang,” US 2012/0264401, published on 10/18/2012), in view of Khota (“Khota,” US 2004/0188520, published on 09/30/2004), and further in view of Weon et al (“Weon,” US 5216633, patented on 06/01/1993).
As to claim 79, the combination of Hwang and Khota teaches the security device of claim 78,
Khota further teaches wherein memory device comprises a semiconductor element comprising a pattern of word and bit lines which physically encode the security code.
Hwang or Khota does not explicitly teach wherein memory device comprises a semiconductor element comprising a pattern of word and bit lines which physically encode the security code.
However, in an analogous art, Khota teaches wherein memory device comprises a semiconductor element comprising a pattern of word and bit lines which physically encode the security code (Woen: abstract, col 3, lines 23-49, semiconductor memory device having a plurality of word lines, bit lines, sense lines, nonvolatile semiconductor memory cells, column selecting transistors, a page buffer circuit, data lines, an input driver/sense amplifier, an input buffer an input/output register and a comparator, and a secret access code is defined in such a manner that a first secret access code is latched in the page buffer circuit).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Khota with the method/system of Hwang and Khota to include the limitation(s), the security code being derived from biological and/or physiological characteristics of a user of the device, where one would have been motivated for the benefit of finding a detail means for storing the secret/security code in a semiconductor element for a electronic chip (Woen: abstract, col 3, lines 23-49).
Claims 82 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (“Hwang,” US 2012/0264401, published on 10/18/2012), in view of Khota (“Khota,” US 2004/0188520, published on 09/30/2004), and further in view of Mihatsch (“Mihatsch,” US 2022/0174043, filed on 12/02/2020).
As to claim 82, the combination of Hwang and Khota teaches the security device of claim 78, in which the security code is derived from DNA data of the user.
Hwang or Khota does not explicitly teach the limitation, in which the security code is derived from DNA data of the user.
However, in an analogous art, Mihatsch teaches, in which the security code is derived from DNA data of the user (Mihatsch: pars 0014-0015, 0017, for user authentication process uses a cryptographic token, which includes user profile information, such as, biometric identification, fingerprint identification, palm veins identification, face identification, DNA identification, palmprint identification, iris identification, hand geometrics identification, retina identification, voice ID identification).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Khota with the method/system of Hwang and Khota to include the limitation(s), in which the security code is derived from DNA data of the user, where one would have been motivated for the benefit of providing a user with a means for using a DNA data, as an option of biological/biometric information type, as a part of the security/authentication code for authenticating user (Mihatsch: pars 0014-0015, 0017).
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jahangir Kabir whose telephone number is (571) 270-3355. The Examiner can normally be reached on 9:00- 5:00 Mon-Thu.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Luu Pham can be reached on (571) 270-5002. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAHANGIR KABIR/ Primary Examiner, Art Unit 2439