DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election without traverse of Invention II (claims 1, 3, 13, and 15) in the reply filed on 2025-11-26 is acknowledged.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2024-07-29 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 and 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter; specifically, it is directed towards software, per se.
Claims 1 and 3 are directed towards software, per se. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re ZIetz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a sever comprising a processor typically covers forms of hardware, software per se, and combinations thereof in view of the ordinary and customary meaning of sever and processor, particularly when the specification is silent. Furthermore, with respect to the instant Application, the interpretation of a sever and processor as software, per se, is also consistent with the Specification, paragraphs [0184]-[0185]. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers software per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter, as software per se does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter). Software is descriptive material that can be considered statutory ONLY if it is both functional and clearly embodied as structural, non-transitory matter; See MPEP § 2106.03(I). Even if the software of the claims is functional, it is not clearly defined as being embodied as structural, non-transitory matter and is therefore not statutory.
The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claims 1, 3, 13, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite recording identifiers when they are authenticated, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories or could be amended such that they are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of recording identifiers when they are authenticated, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: recording identifiers when they are authenticated do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of recording identifiers when they are authenticated merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. server and processor) that serves to perform generic computer functions (e.g. receiving data, requesting data, and setting/recording data) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed relationship, first identifier, first unique information, second identifier, second unique information, result of authentication of the first target, result of authentication of the second target, and correspondence are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards recording identifiers when they are authenticated, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, receiving and requesting data are merely forms of receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, setting a correspondence between identifiers is merely a form of electronic recordkeeping, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log). Further note that the abstract idea of recording identifiers when they are authenticated to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. keeping a log of authorized users.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it affect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
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.
Claims 1, 3, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tiku et al. (US Pre-Grant Publication No. 10149156-B1, hereinafter “Tiku”).
With respect to independent claim 1, Tiku discloses a management server comprising at least one processor, wherein the processor is configured to perform operations of:
receiving, in response to occurrence of a use relationship between a first target and a second target {col. 8, l. 51 - col. 9, l. 3: “the first communication device 104 initiates a call 120 … to the second communication device 108”}, a first identifier of the first target, first unique information of the first target, a second identifier of the second target, and second unique information of the second target from at least one of a first terminal of the first target and a second terminal of the second target {col. 8, ll. 31-50; col. 9, ll. 14-25; and col. 19, ll. 24-43: “first communication device 104 and the second communication device 108 may each send a validation request 122 to the trusted caller ID authority 112 for mutual validation”, each validation request comprising a “trusted token” (with multiple identifiers such as “a username, a personal identification number, hardware identification number, and a secret shared”) of the other device}.
requesting a first server to authenticate the first target by transmitting the received first identifier and the received first unique information to the first server {col. 8, l. 51 - col. 9; and col. 9, ll. 14-25: “second communication device 108 sends a validation request 122 to the trusted caller ID authority 112”, the validation request comprises “a trusted token of the first communication device 104”}.
receiving a result of authentication of the first target from the first server {col. 10, ll. 23-31: “the trusted caller ID authority 112 generates validation information 130, which the trusted caller ID authority 112 sends to the second communication device 108”}.
requesting a second server to authenticate the second target by transmitting the received second identifier and the received second unique information to the second server {col. 8, l. 51 - col. 9; col. 9, ll. 14-25; and col. 19, ll. 24-43: “first communication device 104 and the second communication device 108 may each send a validation request 122 to the trusted caller ID authority 112 for mutual validation” – repeats [“second communication device 108 sends a validation request 122 to the trusted caller ID authority 112”, the validation request comprises “a trusted token of the first communication device 104”] for first communication device}.
receiving a result of authentication of the second target from the second server {col. 10, ll. 23-31; and col. 19, ll. 24-43: “first communication device 104 and the second communication device 108 may each send a validation request 122 to the trusted caller ID authority 112 for mutual validation” – repeats [“the trusted caller ID authority 112 generates validation information 130, which the trusted caller ID authority 112 sends to the second communication device 108”] for first communication device}.
setting a correspondence between the first identifier and the second identifier when the received results of the authentication show that both the first target and the second target have successfully been authenticated {col. 14, ll. 32-55: “When the validation information 130 is received by the second communication device 108, the second communication device 108 may play the audio file to identify the user 102 of the first communication device 104 that is making the call” and/or “to indicate successful validation of the first communication device 104, a multicolor LED may emit a first color of light, such as a green light”}.
With respect to dependent claim 3, Tiku discloses wherein the receiving the first identifier, the first unique information, the second identifier, and the second unique information from at least one of the first terminal and the second terminal includes:
receiving the second identifier and the second unique information from the first terminal {col. 8, ll. 31-50; col. 9, ll. 14-25; and col. 19, ll. 24-43: “first communication device 104 and the second communication device 108 may each send a validation request 122 to the trusted caller ID authority 112 for mutual validation”, each validation request comprising a “trusted token” (with multiple identifiers such as “a username, a personal identification number, hardware identification number, and a secret shared”) of the other device}.
receiving the first identifier and the first unique information from the second terminal {col. 8, ll. 31-50; col. 9, ll. 14-25; and col. 19, ll. 24-43: “first communication device 104 and the second communication device 108 may each send a validation request 122 to the trusted caller ID authority 112 for mutual validation”, each validation request comprising a “trusted token” (with multiple identifiers such as “a username, a personal identification number, hardware identification number, and a secret shared”) of the other device}.
With respect to claims 13 and 15, a corresponding reasoning as given earlier in this section with respect to claims 1 and 3 applies, mutatis mutandis, to the subject matter of claims 13 and 15; therefore, claims 13 and 15 are rejected, for similar reasons, under the grounds as set forth for claims 1 and 3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491