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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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 3, 206, has been entered.
Acknowledgment
This action is in response to the request for continued examination and the amendment filed on September 3, 2026. Claims 1-20 are currently pending and have been fully examined.
Response to Arguments
With respect to the claim objections, the amendment overcomes the objection and the objection is withdrawn.
With respect to the rejection under 35 USC 101, Applicant summarizes, on pages 11-12 of the remarks the response provided to Applicant’s arguments in the Final Office Action of June 3, 2026, and the comments provided in the Advisory Action of August 11, 2026. Applicant asserts that the August 4, 2025, memorandum on Subject Matter Eligibility applies to the present claims and that the claims do not recite a mathematical concept.
The examiner notes that Applicant’s argument is erroneous because Applicant insists on arguing that the claims do not recite a “mathematical concept” while the rejection under 35 USC 101 did not group the claims as reciting a “mathematical concept.” Therefore, arguing against “mathematical concept” is an erroneous argument.
The examiner further notes that according to the MPEP 2106.4(a), three groups of abstract ideas are defined. In the analysis performed in this Office Action, the claims are categorized under the second group of abstract ideas, “Certain methods of organizing human activity,” because the claims describe receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. The claimed features clearly fall within the definition of the second group of abstract ideas “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).”
Applicant further argues, on page 13 of the remarks, that the claims do not recite any method of organizing human activity, and that claim 1 is directed toward a technical design involving (the following claim recitations):
linking a first personal identification card to a user account by at least coordinating with an identity broker,
receiving. a first electronic identification instrument, and a first electronic token,
receiving biometric information, including at least fingerprint authentication, and
presenting the first electronic identification instrument and the first electronic token to a wallet reader, wherein the first electronic identification instrument and wherein the first electronic token are presented based at least in part on receiving the biometric information.
The examiner respectfully disagrees and notes that considering the above claim recitations, all the steps can be performed by a human being while using a wallet reader as a tool. The rest of the claim elements such as electronic identification instrument, and electronic token, are equivalent of identification data which are presented in electronic form, linking a card to a user account can be simply achieved by writing down the card data and account data on a piece of paper, and receiving a fingerprint authentication can be merely equivalent of receiving an authentication decision such as a true (authentic) or false (not-authentic) and presenting the electronic identification and the token to a wallet reader is merely equivalent of scanning data with a scanner tool, which although is a technology activated device, but in this claim is merely used as a tool to input the data into a system, which is an abstract idea with respect to Step 2A, Prong II.
Applicant further argues, on page 14 of the remarks, that Applicant’s Specification includes a technical improvement over the prior art, and that providing secure access is a technical solution to a technical problem. Applicant further argues, on pages 15-16 of the remarks, that the claim recitations quoted above, are all closely related to a technical solution and therefore integrate the judicial exception into a practical application.
The examiner respectfully disagrees and notes that according to MPEP 2106.05(a): “an important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” The examiner notes that the claims do not cover a particular solution to a problem or a particular way to achieve a desired outcome, because the amended claim 1 does not recite providing a secure access, as suggested by Applicant. As seen in the above quote from MPEP 2106.05(a), the basis for subject matter eligibility analysis is the claim and not the content of the Specification or an improvement over the prior art.
Applicant further argues, on page 16-17 of the remarks, and with respect to Step 2B, that the claims contain language that is not well-understood or routine for the relevant industry. Applicant refers to the recitation of claim 1 recites "linking a first personal identification card to a user account by at least coordinating with an identity broker, wherein the identity broker is configured as a pass through for an identity provider" and asserts that in the surrounding industry, none of this language is conventional activity and instead represents an inventive concept and "significantly more" than the judicial exception.
The examiner respectfully disagrees and notes that the rejection of present claims under 101 is not on the basis of being conventional activity or not representing an inventive concept. The examiner again notes that presenting an inventive concept is not sufficient to overcome a rejection under subject matter ineligibility, as the rejection is not always on the basis of being conventional activity. As noted in the previous Office Action a concept may be inventive but still an abstract idea.
With respect to the rejections under 35 USC 103, Applicant’s argument were fully considered but were not persuasive. Applicant argues, on page 18, that the cited prior art fails to teach the amended claims.
The examiner respectfully disagrees and notes that Zaytzsev at least in [0085], [0091] teaches that the central system associates (links) wallet identifying token (personal identification card) with consumer account, which is equivalent of the newly added claim recitation “linking a first personal identification card to a user account by at least coordinating with an identity broker.” In addition, the examiner notes that the claim recitation “wherein the identity broker is configured as a pass through for an identity provider,” indicates non-functional descriptive material that merely describes the identity broker and does not further limit the scope of the claim.
The examiner further notes that Zaytzsev at least in [0054], [0066]-[0067], [0150] teaches that wallet identifying data (electronic identification instrument) is presented with transaction data (payment information), which is which is equivalent of the amended claim recitation: “the first electronic identification instrument is presented together with the electronic payment information.”
Although not argued by Applicant, the examiner notes that the claim amendment “wherein the first electronic identification instrument and the first electronic token are presented based at least in part on receiving the biometric information,” is taught by the newly cited reference of Lloyd.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-7 are directed to a method (process), claims 8-14 are directed to a system (product) and claims 15-20 are directed to a non-transitory computer-readable storage medium (product). Therefore, these claims fall within the four statutory categories of invention.
Claims 1-20 are directed to the abstract idea of receiving data from a source (i.e., identity broker) and presenting the received data to a requestor, as explained in detail below. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
In the following analysis, bolded text indicates abstract idea and the rest of the text indicates additional elements. Independent claims 1, 8 and 15, recite:
linking a first personal identification card to a user account by at least coordinating with an identity broker, wherein the identity broker is configured as a pass through for an identity provider;
receiving, by a wallet application of a user device, a first electronic identification instrument of a user and a first electronic token for the first electronic identification instrument from the identity broker, wherein the first electronic token validates an authenticity of the first electronic identification instrument and the first electronic identification instrument comprises a certified digital image of the first personal identification card of the user; and
storing, by the wallet application, electronic payment information;
receiving biometric information, including at least fingerprint authentication;
presenting, by the wallet application of the user device, the first electronic identification instrument and the first electronic token to a wallet reader of a requestor as part of a transaction involving the requestor, wherein the first electronic identification instrument is presented together with the electronic payment information and wherein the first electronic identification instrument and the first electronic token are presented based at least in part on receiving the biometric information.
The claim recitation is directed to receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. Therefore the claims recite a fundamental economic principle or practice grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for receiving data from a source (i.e., identity broker) and presenting the received data to a requestor. Accordingly, the claims recite an abstract idea (See MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of a wallet application, a user device, electronic identification instrument, electronic token, digital image, wallet reader, a computing device comprising a processor and a memory, and a non-transitory computer-readable medium, merely use one or more computers as tool to perform the abstract idea. The use of a wallet application, a user device, electronic identification instrument, electronic token, digital image, wallet reader, a computing device comprising a processor and a memory, and a non-transitory computer-readable medium, does not integrate the abstract idea into a practical application because it requires no more than one or more computing devices performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) ). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements amount to no more than using computing devices or processors to automate and/or implement the abstract idea.
As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the abstract idea.
Dependent claims 2, 9 and 16 recite:
wherein the electronic payment information is presented with the first electronic identification instrument and the first electronic token to the requestor as part of the transaction,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 3, 10 and 17 recite:
wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 4, 11 and 18 recite:
wherein the certified digital image is embossed with a security feature of the identity broker,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 5, 12 and 19 recite:
storing the first electronic identification instrument and the first electronic token within a secure element of the user device.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element of secure element of the user device, merely use one or more computers as tool to perform the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test the additional element, amounts to no more than using computing devices or processors to automate and/or implement the abstract idea, i.e., “apply it.”
Dependent claims 6 and 13 recite:
encrypting the first electronic identification instrument and the first electronic token before storing the first electronic identification instrument and the first electronic token on the secure element of the user device.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional elements of encrypting, merely use one or more computers as tool to perform the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test the additional element, amounts to no more than using computing devices or processors to automate and/or implement the abstract idea, i.e., “apply it.”
Dependent claims 7, 14 and 20 recite:
storing a second electronic identification instrument of the user and a second electronic token in association with the second electronic identification instrument, wherein the second electronic token is different from the first electronic token,
which further describes the abstract idea. The claims do not recite any new additional elements for consideration under Step 2A, prong 2 or Step 2B, and therefore is ineligible.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 8-11 and 15-18 and are rejected under 35 U.S.C. 103 as being unpatentable over Zaytzsev (US Patent Publication No. 2014/0229375) in view of Wilczynski (US Patent Publication No.: 2016/0180332,) further in view of Lloyd (US Patent Publication No. 2017/0091765.)
With respect to claims 1, 8 and 15, Zaytzsev teaches:
linking a first personal identification card to a user account by at least coordinating with an identity broker, …(central system (i.e. identity broker) associates (links) wallet identifying token (personal identification card) with consumer account: [0085], [0091])
The examiner notes that the claim recitation: “wherein the identity broker is configured as a pass through for an identity provider,” indicates non-functional descriptive material that merely describes the identity broker. In addition, the claim recitation indicates an intended use of the identity broker “as a pass through for…” Therefore, the claim recitation does not further limit the scope of the claim.
receiving, by an … application of a user device, a first electronic identification instrument of a user and a first electronic token for the first electronic identification instrument from the identity broker, (an application on the consumer device receives wallet identifying data/token (electronic token) associated with consumer identifying data (electronic identification instrument) from a central system (i.e. identity broker): FIG. 1a, element 102, the wallet identifying data includes wallet identifying tokens: [0052], [0075], the wallet identifying tokens may be associated with a consumer (e.g., via consumer identifying data, a consumer payment account, and/or a consumer device identifier (i.e., first electronic identification instrument)): [0047], [0054], [0078])
wherein the first electronic token validates an authenticity of the first electronic identification instrument, (the central system validates and authenticates data using the wallet identification token: [0067])
storing, by the wallet application, electronic payment information; (consumer payment account data is stored in a database and downloaded by the consumer device (stored): [0071], [0074]-[0075])
receiving biometric information, including at least fingerprint authentication; (consumer login using fingerprints: [0142], [0178])
presenting, by the … application of the user device, the first electronic identification instrument and the first electronic token to a wallet reader of a requestor as part of a transaction involving the requestor. (consumer device sends wallet identifying data including tokens to a merchant device: [0053], [0055], [0086], online transaction: [0052])
wherein the first electronic identification instrument is presented together with the electronic payment information, (the wallet identifying data (electronic identification instrument) presented with transaction data (payment information): [0054], [0066]-[0067], [0150])
Zaytzsev do not explicitly teach; however, Wilczynski teaches:
a wallet application, (digital wallet software application on client device: [0025])
the first electronic identification instrument comprises a … digital image of a first personal identification card of the user; (a photo of an identification card of the user is stored in the wallet: [0021], [0057]-[0058])
In addition, Wilczynski teaches:
storing, by the wallet application, electronic payment information; (FIG. 2, [0025]-[0026])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate an image of a physical identification card added to a digital wallet, as taught by Wilczynski, into the consumer identifying data for the payment token management system of Zaytzsev , in order to avoid carrying the physical cards, while using the card information for identifying the user. (Wilczynski, Abstract, [0002])
The examiner notes that although Zaytzsev and Wilczynski do not explicitly teach that the digital image is “certified” the fact that the image is certified is not given patentable weight, because first, the “certifying” of the digital image is not positively recited, and secondly, whether the image is certified or not does not have any effect on any of the claimed features.
Zaytzsev and Wilczynski do not explicitly teach; however, Lloyd teaches:
wherein the first electronic identification instrument and the first electronic token are presented based at least in part on receiving the biometric information. (an interface including wallet credentials ( i.e., first electronic identification instrument) and payment tokens (i.e., first electronic token) is presented to the payment device: FIG. 2, [0081], the interface is presented in response to user authentication by receiving biometric information such as fingerprint: [0085])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate user authentication using biometric information, as taught by Lloyd, into the payment token management system of Zaytzsev and Wilczynski , in order to ensure validity of the transaction by authenticating the user prior to processing the transaction. (Lloyd, Abstract, [0005])
With respect to claims 2, 9 and 16 Zaytzsev and Wilczynski and Lloyd teach the limitations of claims 1, 8 and 15.
Moreover, Zaytzsev teach:
wherein payment information is presented with the first electronic identification instrument and the first electronic token to the requestor as part of the transaction. (transaction data (i.e., payment information) is sent as part of the transaction: [0054], [0150])
With respect to claims 3, 10 and 17 Zaytzsev and Wilczynski and Lloyd teach the limitations of claims 1, 8 and 15.
Moreover, Wilczynski teaches:
wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card. ([0021])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate adding information about a physical identification card to a digital wallet, as taught by Wilczynski, into the payment token management system of Zaytzsev, in order to avoid carrying the physical cards. (Wilczynski, Abstract, [0002])
The examiner notes that the claim recitation “wherein the first personal identification card comprises a driver's license card, a health insurance card, a passport, or a club membership card,” indicates non-functional descriptive material and therefore does not further limit the scope of the claim.
With respect to claims 4, 11 and 18, Zaytzsev and Wilczynski and Lloyd teach the limitations of claims 1, 8 and 15.
Zaytzsev and Wilczynski do not explicitly teach:
wherein the certified digital image is embossed with a security feature of the identity broker.
However, the claim recitation indicates a not positively recited function, because the “embossing” function is not positively recited. In addition, the claim recitation indicates non-functional descriptive material because the fact that the image is embossed does not affect any of the claimed features. Therefore the claim recitation does not further limit the scope of the claim.
Claims 5-7, 12-14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zaytzsev in view of Wilczynski and Lloyd, as applied to claims 1, 8 and 15 above, further in view of Aabye (US Patent Publication No. 2015/0120472.)
With respect to claims 5, 12 and 19, Zaytzsev and Wilczynski and Lloyd teach the limitations of claims 1, 8 and 15.
Zaytzsev and Wilczynski and Lloyd do not explicitly teach; however Aabye teach:
storing the first electronic identification instrument and the first electronic token within a secure element of the user device. ([0039]-[0040], [0067], [0069], [0079])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye for storing digital wallet data in a trusted environment, into the payment token management system of Zaytzsev and Wilczynski and Lloyd, in order to reduce security risks to sensitive user credentials. (Aabye , Abstract, [0005])
With respect to claims 6 and 13, Zaytzsev, Wilczynski, Lloyd and Aabye teach the limitations of claims 5 and 12.
Moreover, Zaytzsev teach:
encrypting the first electronic identification instrument and the first electronic token…([0066]-[0067])
In addition, Aabye teach:
encrypting the first electronic identification instrument and the first electronic token before storing the first electronic identification instrument and the first electronic token on the secure element of the user device. ([0067])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye for encrypting data before storing in a trusted environment, into the payment token management system of Zaytzsev and Wilczynski and Lloyd, in order to reduce security risks to sensitive user credentials. (Aabye , Abstract, [0005])
With respect to claims 7, 14 and 20, Zaytzsev , Wilczynski, Lloyd and Aabye teach the limitations of claims 5, 12 and 19.
Moreover, Zaytzsev teach:
In addition, Aabye teach:
storing a second electronic identification instrument of the user and a second electronic token in association with the second electronic identification instrument, wherein the second electronic token is different from the first electronic token. (user may be represented by two separate instances of digital wallet identifier, first instance and second instance: Claim 7, [0085], multiple different tokens associated with the digital wallet identifiers are securely stored: [0031], [0037], [0069], [0088])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the feature of Aabye for tracing plurality of payment tokens associated with multiple instances of wallet identifier, into the payment token management system of Zaytzsev and Wilczynski and Lloyd, in order to link different user accounts. (Aabye : Abstract, [0006])
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rodriguez (US 2014/0244514 ) teaches performing payment transactions using smartphone-based virtual wallets and authenticating user based on biometric match.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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