Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This Office Action is in response to the communication and claim amendment
filed on 03/30/2026. Claims 1, 14, and 15 are independent claims. Claims 7-9, 13, and 16 have been withdrawn; Claims 1-6, 10-12, and 14-15 have been examined and are pending. This Action is made FINAL.
Response to Arguments
Applicants’ arguments in the instant Amendment, filed on 03/30/2026, with respect to limitations listed below, have been fully considered but they are not persuasive.
Applicants argue that under the broadest reasonable interpretation consistent with the specification, claim 1 requires the steps to be “implemented by a device/processor “(citing spec. [0038]–[0039], [0206]–[0208]), and therefore the steps are not performed by the human mind and do not recite a mental process; (Applicant Remarks/Arguments, pages 9-10).
The Examiner respectfully disagrees with the Applicants.
Although the method of claim 1 is implemented by a device, using a generic computing device to perform an abstract idea does not make the claim statutory. Courts have repeatedly held that merely instructing a computer to “apply” an otherwise abstract idea, or to perform it over the computing network/Internet, is insufficient to transform a patent-ineligible concept into a patent-eligible invention. See Alice Corp. Pty. Ltd. v. CLS Bank International (2014); Content Extraction & Transmission LLC v. Wells Fargo Bank (2014): see also MPEP 2106.05(f) for details. As recited in the claim, the claim comprises the steps of “generating a profile …,” “selecting … identity data from a set of identity data” and “integrating the selected identity data into the profile;” Broadly interpreted, the aforementioned steps are directed to mental processes as said steps could be performed in the human mind and/or using pen and paper. Therefore, the claims recite an abstract idea. Said abstract idea and/or judicial exception is not integrated into a practical application as the claim does not recite any other active steps that could be considered that the abstract idea is being integrated into a practical application. It is noted that that claim recites additional elements (i.e., “the method implemented by a device” and “an electronic identity wallet,”) said additional elements are recited at a high-level of generality (i.e., as a generic computing device performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception or abstract idea using a generic computing device. As discussed above, the claim recites an abstract idea.
Applicants argue that relying on the Memorandum issued by Charles Kim (USPTO, August 4, 2025), that claim 1 does not recite a mental process because the recited steps "cannot practically be performed in the human mind" (Step 2A, Prong One) (Remarks, (Applicant Remarks/Arguments, page 10).
The Examiner respectfully disagrees with the Applicants.
As discussed in section a) above, the claim recites the steps of “generating a profile …,” “selecting … identity data from a set of identity data” and “integrating the selected identity data into the profile;” Broadly interpreted, the aforementioned steps are directed to mental processes as said steps could be performed in the human mind and/or using pen and paper. Therefore, the claim recites an abstract idea. Said abstract idea and/or judicial exception is not integrated into a practical application as the claim does not recite any other active steps that could be considered that the abstract idea is being integrated into a practical application. It is noted that that claim recites additional elements (i.e., “the method implemented by a device” and “an electronic identity wallet,”) said additional elements are recited at a high-level of generality (i.e., as a generic computing device performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception or abstract idea using a generic computing device. As discussed above, the claim recites an abstract idea and using a generic computing device to perform an abstract idea does not make the claim statutory. See Alice Corp. Pty. Ltd. v. CLS Bank International (2014); Content Extraction & Transmission LLC v. Wells Fargo Bank (2014): see also MPEP 2106.05(f) for details.
Applicants argue that even if claim 1 recites an abstract idea, the claim integrates the exception into a practical application because it provides improvements to the technology of digital identity management and improves the operation/performance of the service provider's computing device — e.g., reducing the risk of service-provision errors and reducing transmission/processing time (Step 2A, Prong Two) (citing spec. [0017]–[0023]) (Remarks, (Applicant Remarks/Arguments, pages 8 & 11).
The Examiner respectfully disagrees with the Applicants.
Prong Two — no practical application. The improvements Applicant identifies (reduced service-provision errors, reduced transmission/processing time) are not recited in claim 1, which recites only generating, selecting, and integrating — no transmission to a service provider, no SIOP/SSI protocol, no mediation. The improvement relied upon must be reflected in the claim, not merely described in the specification: the claim must include the steps or components that provide the asserted improvement (MPEP 2106.05(a)). The transmission, SIOP/SSI, and processing-time features Applicant relies upon are disclosed only in the specification and are absent from claim 1; they therefore cannot integrate the exception into a practical application." The generic device, processor, and computer readable medium merely apply the abstract idea (MPEP 2106.05(f)) and impose no meaningful limit on its practice; the claim, considered as a whole, does not integrate the exception into a practical application or recite significantly more.
Before addressing the two arguments on pages 12-13, the Examiner clarifies the mapping, because both arguments are based on a mapping the Office did not make:
The claim term “profile of certified identities” is mapped to Ahn's collection of certified (managed) cards stored in information card storage 24 — Ahn's "portfolio of Information Cards" (Ahn, pars. 0049, 0067). It is not mapped to a single card.
The claim term "a set of identity data" is mapped to the multiple identity data items available in Ahn (par. 0050).
The claim term “identity data” (the item selected) is mapped to an individual card in Ahn (par. 0050).
Applicants argue: Applicant argues that if a single InfoCard is treated as the identity profile, Ahn fails to disclose how the card is generated and fails to disclose adding selected identity data into the card (Applicant Remarks/Arguments, page 13).
The Examiner respectfully disagrees with the Applicants.
The profile is not mapped to a single card. It is mapped to the collection of certified cards stored in card storage 24 (Ahn: pars. 0049, 0067). The claim recites integrating the selected identity data “into the profile,” which reads on storing the selected card into card storage 24 (Ahn: par. 0049). The claim does not require adding data into a single card. Applicant's argument asks Ahn to show something the claim does not require, and a limitation that is not in the claim cannot be used to distinguish over the prior art (In re Self, 671 F.2d 1344, 1348 (CCPA 1982)). This argument is therefore based on a mapping the Office did not make.
Applicants argue: if a single InfoCard is treated as identity data, Ahn discloses only selecting a whole card from among several cards, but does not disclose selecting parts of a first card and a second card, or combining data from two cards into the profile (Applicant Remarks/Arguments, page 13).
The Examiner respectfully disagrees for the following reasons:
Under the broadest reasonable interpretation, a card in Ahn is "identity data," and the multiple cards available are "a set of identity data." Applicant agrees that Ahn discloses selecting a card from among several cards (Remarks, p. 13). That selection is "selecting identity data from a set of identity data," as claimed. The claim requires only selecting identity data from a set. It does not require selecting parts of one card and parts of another card, or combining data from two cards. Applicant's argument is therefore directed to a requirement that is not in the claim (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). The selected identity data is then integrated into the profile by being stored in card storage 24 (Ahn: par. 0049).
For these reasons, Ahn discloses every limitation of claim 1 as arranged in the claim, and the rejection of claims 1–4, 10, 11, 14, and 15 under pre-AIA 35 U.S.C. 102(a)(1) is maintained.
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 1-6, 10-11, and 14-15 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Regarding claims 1, 14, and 15; Claims 1, 14, and 15 are rejected under U.S.C. 101 because the claimed invention is directed to an abstract idea without significant more. The claims recite “generating a profile …;” “selecting [] identity data …;” “integrating the selected identity data…” Broadly interpreted, the aforementioned steps are directed to mental processes as said steps could be performed in the human mind and/or using pen and paper. Therefore, the claims recite an abstract idea.
Said abstract idea and/or judicial exception is not integrated into a practical application as the claim does not recite any other active steps that could be considered that the abstract idea is being integrated into a practical application. It is noted that that claim recites additional elements (i.e., “the method implemented by a device” and “an electronic identity wallet,”) said additional elements are recited at a high-level of generality (i.e., as a generic computing device performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception or abstract idea using a generic computing device. As discussed above, the claim recites an abstract idea and using a generic computing device to perform an abstract idea does not make the claims statutory. See Alice Corp. Pty. Ltd. v. CLS Bank International (2014); Content Extraction & Transmission LLC v. Wells Fargo Bank (2014): see also MPEP 2106.05(f) for details.
The claim does not include additional elements 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 element of using a processor/machine learning model to perform generating and selecting steps to no more than mere instructions to apply the exception using a generic computer component. Mere instruction to apply an exception using a generic computer component cannot provide an inventive concept. The claim(s) is/are not patent eligible.
Regarding claims 2-6 and 10-11; Claims 2-6 and 10-11 are also rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter for the same reasons addressed above as the claims recite an abstract idea and the claims do not positively recite any other operations that could be considered as the abstract idea is being integrated into a practical application or significantly more. It’s noted that claim 4 recites “recording the generated profile ….” This step could be done in the human mind or using pencil and paper.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 10-13, 14, and 15 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Ahn (“Ahn,” US 2009/0300742)
Regarding claim 1, Ahn teaches a method implemented by a device and comprising:
generating a profile of certified identities associated with a user account for an electronic identity wallet (Ahn: par. 0067, The Identity Selector allows the user to manage (e.g. create, review, update, and delete cards within) their portfolio of Information Cards ; par. 0050, Each information card represents the user's identity in different contexts in a request security token transaction; par. 0049, The user device 12 is particularly useful when it carries multiple managed cards, stored in information card storage 24. Each managed card is generated by an identity provider; pars. 0003, 0025, user-portable user computing device including user identity information; par. 0097, a digital “wallet” – that can be accessed by the identity selector; pars. 0083,0047), the generating comprising:
selecting, for the profile of certified identities, identity data from a set of identity data received from at least one certified identity provider associated with the user account (Ahn: par. 0008, Users are allowed to select their credentials when they respond to an authentication or attribute requester. As users control and manage their identity attributes through the user-centric identity management, the users can have more right and responsibility for their identity information than before; par. 0070, the identity selector determines which information cards within its domain of operation satisfy the identity requirements of the security policy; par. 0050, Each information card represents the user's identity in different contexts in a request security token transaction; claim 14: the user selecting one of the user identities determined to satisfy the security policy requirements; pars. 0011, 0047);
then integrating the selected identity data into the profile of certified identities (Ahn: par. 0048, The information card storage 24 stores a digital representation of these information cards; par. 0049 install managed card in information card storage 24; par. 0050).
Regarding claim 2, Ahn teaches the method as claimed in claim 1. Ahn further teaches wherein at least one identity data item is selected as a function of identity data required by at least one service provider (Ahn: par. 0067, The identity selector provides a consistent user experience for authentication (and in some cases other kinds of interactions) with a Relying Party (e.g., a Service Provider). It provides a user interface that displays a set of Information Card icons from which the user selects their preferred Information Card when authentication is required by a local application or Relying Party ( e.g. a web site's login page); par. 0069, the security policy governs the authentication process and specifies the identity requirements required by the relying party to first authenticate the user's identity and then to authorize access; par. 0070, the identity selector determines which information cards within its domain of operation satisfy the identity requirements of the security policy; claim 14: the user selecting one of the user identities determined to satisfy the security policy requirements).
Regarding claim 3, Ahn teaches the method as claimed in claim teaches the method as claimed in claim 2. Ahn further teaches wherein at least one identity data item is selected as a function of a selection command received from a user interface (Ahn: par. 0060, Referring to FIG. 2, identity selector 26 includes an information card manager 50, graphical user interface (GUI) 52, card store 54, iButton/Smartcard Agent 56, web service client 58, local STS/Token Issuer 60, and libraries 62; par. 0062, The graphical user interface 52 manages the user interface of identity selector 26, and can be provided in any conventional form. GUI 52 includes a set of interactive screens that enable the user to create a new card (self-issued card), examine information cards (i.e., to ascertain what information would be disclosed by the release of a security token based on the information card), and select an information card that serves as the basis for preparing a token request; See also pars. 0074, 0050).
Regarding claim 4, Ahn teaches the method as claimed in claim 1. , the generation method comprising: recording the generated profile of certified identities in a database on a non-transitory computer readable medium (Ahn: par. 0043, The user device 12 includes a token generator 20 provided in one form as a security token service (STS); a user attribute storage 22 accessible by the STS 20; and a user identity database 24 provided in one form as an information card storage; par. 0048, The information card storage 24 stores a digital representation of these information cards; par. 0063, The card store 54 provides storage for information cards, which may be stored in XML format or any other suitable format. Any type of information card can be stored in card store 54, including self-issued cards and third-party managed cards; par. 0091, volatile RAM (NVRAM) capacity, and unalterable realtime clock. Par. 0091, It utilizes NVRAM for program and data storage. Unlike electrically erasable programmable read-only memory, the NVRAM iButton memory can be erased and rewritten as often as necessary without wearing out).
Regarding claim 10, Ahn teaches the method as claimed in claim 1. Ahn further teaches, wherein the method comprises managing the profile of certified identities associated with the user account for the electronic identity wallet (Ahn: par. 0062, GUI 52 includes a set of interactive screens that enable the user to create a new card (self-issued card), examine information cards (i.e., to ascertain what information would be disclosed by the release of a security token based on the information card), and select an information card …; par. 0067, The Identity Selector allows the user to manage (e.g. create, review, update, and delete cards within) their portfolio of Information Cards; par. 0060).
Regarding claim 11, Ahn teaches the method as claimed in claim 10. Ahn further teaches, the method comprising modifying the profile of certified identities by modifying at least one identity data item of the profile of certified identities (Ahn: par. 0067, The Identity Selector allows the user to manage (e.g. create, review, update, and delete cards within) their portfolio of Information Cards; par. 0061, Manager 50 generally directs, supervises, controls, and otherwise manages the various components of identity selector 26. It also provides the card creation and editing functions for the self-issued information card).
Regarding claim 14, claim 14 is directed to a non-transitory computer readable medium comprising program code instructions (Ahn: par. 0030) stored thereon for executing a method of generating a profile of certified identities associated with a user account for an electronic identity wallet, when said instructions are executed by a processor (Ahn: par. 0030) associated with the method claimed in claim 1; claim 14 is similar in scope to claim 1, and is therefore rejected under similar rationale.
Regarding claim 15, claim 15 is directed to an electronic identity wallet capable of providing certified identity data, the electronic wallet comprising: at least one processor (Ahn: par. 0030); and at least one non-transitory computer readable medium (Ahn: par. 0030) comprising instructions stored thereon which when executed by the at least one processor configure the electronic identity wallet to generate a profile of certified identities associated with a user account of the electronic identity wallet by associated with the method claimed in claim 1; claim 15 is similar in scope to claim 1, and is therefore rejected under similar rationale.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (“Ahn,” US 2009/0300742) in view of Mahaffey et al. (“Mahaffey,” US 9,374,369)
Regarding claim 5, Ahn teaches the method as claimed in claim 1. Ahn does not explicitly disclose, wherein, the profile of certified identities is intended for a type of service provider, and the selection is carried out as a function of the type of service provider associated with the profile of certified identities.
However, in an analogous art, Mahaffey discloses
the profile of certified identities is intended for a type of service provider (Mahaffey: Col. 8, lines 1-4, User preferences can be based on category of service), and
the selection is carried out as a function of the type of service provider associated with the profile of certified identities (Mahaffey: Col. 8, lines 4-8, a user chooses that shopping sites cannot get the user's email address but do receive a valid billing and shipping address and valid credit card information, whereas a social network may receive the user's email and music preferences but not their address. The server may have a database of service categorizations to allow 10 the providing of information to a service to happen automatically). 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 Mahaffey with the method and system of Ahn to include the profile of certified identities is intended for a type of service provider, and the selection is carried out as a function of the type of service provider associated with the profile of certified identities. One would have been motivated to make this modification because Mahaffey teaches that category-based preferences enable the providing of information to a service to happen automatically (Mahaffey: Col. 8, lines 4-8), `
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (“Ahn,” US 2009/0300742) in view Lu et al. (“Lu,” US 9.825,917).
Regarding claim 6, Ahn teaches the method as claimed in claim 1. Ahn further teaches the profile of certified identities being associated with the service provider (Ahn: par. 0070 : "the identity selector determines which information cards within its domain of operation satisfy the identity requirements of the security policy"), the user selects an information card, and a token is generated and presented to that relying party; par. 0075, "the identity selector generates a token request based on the user identity corresponding to the selected information card... ; par. 0076, the identity selector presents the security token to the relying party). Ahn does not explicitly disclose integrating the selected identity data is triggered as soon as the electronic identity wallet provides a service provider with the selected identity data. In Ahn, the information cards are pre-created by identity providers or by users in advance of the service provider interaction (Ahn: par. 0049: "Each managed card is generated by an identity provider"; par. 0061: "Manager 50 enables a user to create self-issued information cards").
However, Lu further discloses that in the on-demand flow, the credentials creation is “triggered by the service provider interaction.” (Lu: Col. 7, lies 63-64, The current online world. However, often operates in the mode of getting an identity credential only at the moment when it is needed."; Col.7, lines 64 to Col. 8 lines 1-5, In on-demand flow, the user 101 commences by visiting a service provider (SP) 115 web service which asks the user 101 to present a certain credential. In the on-demand-flow scenario, neither the user 101 nor the security device 109 of the user already has the required credential to satisfy the requirements of the SP 115. The SP 115 directs the user to get the credential dynamically; Col. 10, lines 48-51, "Step 823: The security device 109 generates and stores the credential 503... and returns a status message, step 825, to the IdP indicating the completion of the generation of the credential 503.").
Lu further teaches the profile of certified identities being associated with the service provider (Lu: Col. 7, lines 33-34, "the solution varies depending on whether the credential 503 is SP-specific or not"; Col. 11, lines 23-26, and that the separator component "should be able to associate token requests with the appropriate SPs" by keeping "a map of requests and SPs").
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 Lu with the method and system of Ahn to include wherein integrating the selected identity data in the profile of certified identities is triggered as soon as the electronic identity wallet provides a service provider with the selected identity data. One would have been motivated to make this combination based on Lu's teaching that: the current online world, however, often operates in the mode of getting an identity credential only at the moment when it is needed (Lu: Col. 7, lies 63-64). Lu further teaches that this on-demand approach provides benefits including "achieving privacy goals while providing a seamless user experience" (Lu: Col. 9, lines 7-8).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (“Ahn,” US 2009/0300742) in view of COXE et al. (“COXE,” US 2015/0332029).
Regarding claim 12, Ahn teaches the method as claimed in claim 11. Ahn further teaches receiving identity data from certified identity providers such as "a government, a bank, an employer" and editing functions for information cards (Ahn: par. 0083, par. 0067). However, Ahn does not explicitly teach: adding a selected identity data item, for the profile of certified identities; deleting an identity data item from the profile of certified identities.
However, in an analogous art, COXE discloses
adding a selected identity data item, for the profile of certified identities, from the set of identity data received from the at least one certified identity provider associated with the user account (COXE: abstract, add new attributes that may be useful or required for conducting business with relying parties; par. 0039, the identity provider may be "their bank, employer, a government agency, email provider).
deleting an identity data item from the profile of certified identities (COXE: par. 0064, revoke or suspend an RPs access to an identity attribute verification; par. 0065, where "attributes 1-4 (Blocks 304, 306, 308 and 310)" including "name, email, physical address, and telephone (NEAT)" can be individually managed).
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 COXE with the method and system of Ahn to include adding a selected identity data item, for the profile of certified identities, from the set of identity data received from the at least one certified identity provider associated with the user account; deleting an identity data item from the profile of certified identities. One would have been motivated to add new attribute that may be useful or required for conducting business with relying parties and allow users control exactly which attributes are shared with relying parties (COXE: abstract, par, 0064).
Conclusion
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 extension fee 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 CANH LE whose telephone number is (571)270-1380. The examiner can normally be reached on Monday to Friday 6:00AM to 3:30PM other Friday off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham, can be reached at telephone number 571-270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Canh Le/
Examiner, Art Unit 2439
June 5th, 2026
/LUU T PHAM/Supervisory Patent Examiner, Art Unit 2439
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