DETAILED ACTION
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 .
This communication is a Non-Final Office Action in response to Applicant’s Response to Election/ Restriction filed on February 4, 2026.
Claims 1-12 have been withdrawn. Claims 13-24 are examined in this application.
The information disclosure statement filed on October 28,2024 has been considered.
Claim Objections
Claim 24 is objected to because of the following informalities: the claim recites “[a] computer program product comprising program instructions for causing a computer equipment adapted to manage data to perform a method according to claim 13.” However, claim 13 is directed to “[a] method for managing data provided by a first computer equipment, the method comprising…” It seems there are two distinct entities being claimed as carrying out the same claim limitations, the computer equipment in claim 24 and the first computer equipment in claim 1. If the claims are correctly written, then support for two entities carrying out the same limitations is required. If not, amending claim 24 accordingly is required.
Appropriate correction is required.
Election/Restrictions
Applicant’s election without traverse of claims 13-24 in the reply filed on February 4, 2026 is acknowledged.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means for obtaining…,” “means for obtaining one or more first biometric mathematical representations of the subject…,” “means for comparing…,” and “means for sending…” in claim 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per claim 23, the claim is directed to “[a] computer equipment adapted to manage data provided by a first computer equipment, comprising… means for obtaining… means for obtaining… means for comparing… in case of positive result… selecting the corresponding first biometric… and means for sending subject identifier…” The Specification does not provide the exact structure to carry out the claim as a whole. A computer equipment could be software, wherein software does not cause functions to be carried out but instead is utilized by hardware elements such as a processor to execute the software to cause functions to be carried out. Finally, the term “computer equipment” could be understood, under the broadest reasonable interpretation, to mean multiple entities / equipment not just a single entity/equipment. The Specification discloses a first computer equipment 200 and a computer equipment 300. A clear link between the claims and the related structure in the Specification is not found. As a result, the claim is rejected. Applicant may amend the claim to recite appropriate Beauregard language and further point to support in the Specification that would allow the claimed scope to be carried out as a whole in order to overcome the rejection.
Claim 13 is directed to a “method for managing data provided by a first computer equipment, the method comprising… sending subject identifier data, associated to the selected first biometric mathematical representation of the subject, to the first computer equipment…” Emphasis added. Because the claims are directed to a first computer equipment (the first computer equipment carried out the claim limitations as a whole), it is not known how the sending limitation is carried out since it recites that the subject identifier data is being sent to the first computer equipment by the first computer equipment. In other words, how can an entity send the subject identifier data to itself. The Specification does not provide support for a single entity performing all claimed limitations and sending the subject identifier data to itself.
Applicant may point to the support in the Specification or amend the claims to capture who sends the subject identifier data and who receives the subject identifier data.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claim 23, the claim limitations “means for obtaining…,” “means for obtaining one or more first biometric mathematical representations of the subject…,” “means for comparing…,” and “means for sending…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The Specification discloses multiple links between the structure, material, or acts and the functions; therefore, making it unclear as to which of the structures corresponds to the claimed functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Under the broadest reasonable interpretation, the claimed “computer equipment” can be deems to amount to mere software stored in a memory, which is not executed to cause a structural element to perform functions as described.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Per claims 13-22, and 24, the claims recite “the corresponding first biometric mathematical representation.” It is not clear whether this is referring to “a biometric mathematical representation of physical characteristics of a subject” or “one or more first biometric mathematical representations of the subject.” Because clear antecedent basis is not established, for purposes of examination, “the corresponding first biometric mathematical representation” will be deemed as referring to “one or more first biometric mathematical representations of the subject.” Applicant can easily overcome the rejection by amending the limitation at issue to include proper antecedent basis.
Claim 13 recites “the message” in the last limitation. There is lack of antecedent basis in the claim for the limitation.
All dependent claims are rejected for mere dependence on rejected claim 13.
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 13-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 13-24 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 13-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of sending/provisioning data to provide access to a user without significantly more.
The abstract idea is categorized under certain methods of mental processes including concepts performed in the human mind, and with use of pen and paper, such as observation, evaluation, judgement and opinion. The recognition of a user using visual means and or a fingerprint on paper allow another user to obtain the user’s biometrics and compare them to stored biometric (again either stored in memory or paper), compare the biometrics and send data in response to the user to allow the user access to a file or document. Under the broadest reasonable interpretation, the claims amount to the receipt of data, analyzing it with stored data and outputting a result. Furthermore, and again under the broadest reasonable interpretation, as evident by the dependent claims, the abstract idea is further characterized under certain methods of organizing human activity. The claims capture commercial interactions, including at least business relations. The utilization of user data stored in a wallet to authenticate a user and to allow the user access to information captures business relations between parties that require user validation before approving access to data.
Claim 13, in pertinent part, recites:
A method for managing data provided by… [a first entity], the method comprising:
obtaining a biometric mathematical representation of physical characteristics of a subject which is to be authorized to access… [an item] adapted to manage the data;
obtaining one or more first biometric mathematical representations of the subject;
comparing the obtained biometric mathematical representation of physical characteristics of the subject with the obtained first biometric mathematical representations;
in case of positive result in the comparison, selecting the corresponding first biometric mathematical representation, and
sending subject identifier data, associated to the selected first biometric mathematical representation of the subject, to the… [first entity], wherein the subject identifier data is related to the subject which is to be authorized to access… [an item] adapted to manage the message.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a first computer equipment, a computer equipment adapted to manage the data, and a computer program product comprising program instructions. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data, analyzing the data, and determining an outcome. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims do 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 elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. For instance, the dependent claims include additional elements such as a machine-readable optical label, and receiving data related to the subject from a digital wallet comprised in the first computer equipment. These additional elements are also recited at a high level of generality, amounting to no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. They simply automate the abstract idea.
The claims are not patent eligible.
In addition, claim 24 recites a “computer program product comprising instructions for causing a computer equipment adapted to manage data to perform a method according to claim 13. The USPTO recognizes that when claims are directed to computer readable media that cover signals per se, the claims must be rejected under 35 USC 101 as covering both non-statutory subject matter and statutory subject matter. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC 101 by adding the limitation “non-transitory” to the claim.
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 13-14, 16-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2017/0323300 to Weiss (Weiss).
Per claims 1, 23, and 24, Weiss teaches all of the limitations:
A method for managing data provided by a first computer equipment, the method comprising (“Embodiments of the invention generally relate to systems, methods, and apparatus for authenticating identity or verifying the identity of individuals and other entities seeking access to certain privileges and for selectively granting privileges and providing other services in response to such identifications/verifications”) [Abstract Paragraphs 0010 and 0013]:
obtaining a biometric mathematical representation of physical characteristics of a subject which is to be authorized to access a computer equipment adapted to manage the data (user encrypted biometric data is obtained, which serves as a mathematical representation of the user characteristic) [Paragraphs 0186, and 0207-0210];
Examiner notes that the following limitation is an intended use limitation, which does not actually occur; thus, it has no patentable weight: “to be authorized to access a computer equipment adapted to manage the data.”
obtaining one or more first biometric mathematical representations of the subject (obtaining stored biometrics for comparison) [Abstract, Paragraphs 0186, 0193-0195 and 0204];
comparing the obtained biometric mathematical representation of physical characteristics of the subject with the obtained first biometric mathematical representations (the received biometric is compared to the retrieved biometric encoded data) [Abstract, Paragraphs 0186, 0193-0195 and 0204];
in case of positive result in the comparison, selecting the corresponding first biometric mathematical representation (retrieval of a portion or all of the biometric representation of the user in response to user authentication) [Abstract, Paragraphs 0186, 0193-0195 and 0204], and
The above claim limitation does not have to occur because it is a conditional limitation, with respect to claim 13. Amending the limitation to positively capture the action is required.
sending subject identifier data, associated to the selected first biometric mathematical representation of the subject, to the first computer equipment, wherein the subject identifier data is related to the subject which is to be authorized to access a computer equipment adapted to manage the message (user can access a second device after authentication) [Paragraphs 0203-0211].
Examiner notes that the limitation “to be authorized to access a computer equipment adapted to manage the message” is both conditional and directed to an entity, a computer equipment, that is outside the scope of the claim; therefore, it does not have any patentable weight.
Per claim 14, Weiss teaches wherein obtaining the biometric mathematical representation of physical characteristics of the subject comprises: capturing one or more physical characteristics representative of the subject, each physical characteristic containing a biometric feature of the subject; identifying the biometric feature in the captured physical characteristics; and generating the biometric mathematical representation of physical characteristics of the subject representing the identified feature [Abstract, Paragraphs 0038 and 0289-0292].
Per claim 16, Weis teaches the method further comprising: receiving data related to the subject from a digital wallet comprised in the first computer equipment; authorizing the access of the subject to the computer equipment adapted to manage the data based on the received data [Paragraphs 0269-0271, and 0277-0281].
Per claim 17, wherein authorizing the access of the subject to the computer equipment adapted to manage the data based on the received data comprises: comparing the data related to the subject obtained from the digital wallet comprised in the first computer equipment with the same data related to the subject stored in a database; in case of positive result of the comparison, authorizing the access of the subject to the computer equipment adapted to manage the message [Abstract, Paragraphs 0186, 0193-0195 and 0204].
Per claim 18, wherein capturing one or more physical characteristics comprises capturing one or more of an image, an audio, a video, a biological, or a chemical sample of the subject, specifically capturing an image comprises capturing an image with one or more of a portion of a face, of a palm, of a fingerprint, of an eye, of ears, of a nose, of teeth, of a tongue, of palm veins pattern, or of finger veins pattern, of the subject [Abstract, Paragraphs 0040, 0101, and 0264].
Per claim 19, wherein the first biometric mathematical representations of the subject have been previously received by the computer equipment adapted to manage the data and / or the first biometric mathematical representations of the subject are stored in a database [Paragraphs 0027-0028].
Per claim 20, the method further comprising: deleting the obtained first biometric mathematical representations of the subject and / or the obtained data related to the subject [Abstract, Paragraphs 0038-0041, and 0170-0173].
Per claim 21, wherein deleting the obtained first biometric mathematical representations of the subject and / or the obtained data related to the subject comprises:- obtaining a first time from a timer;- obtaining a second time previously assigned to the data related to the subject or to the first biometric mathematical representations of the subject;- checking whether the first time is above the second time;- in case of positive result in the checking, deleting the corresponding first biometric mathematical representations of the subject and / or the corresponding data related to the subject [Abstract, Paragraphs 0038-0041, and 0170-0173].
Per claim 22, wherein deleting the first biometric mathematical representations of the subject and / or the obtained data related to the subject further comprises: receiving a request, from the first computer equipment, for deleting the first vectors and / or the obtained data related to the subject [Abstract, Paragraphs 0038-0041, and 0170-0173].
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 15 is rejected under 35 U.S.C. 103 as being unpatentable Weis, in view of U.S. Patent Application Publication 2025/0168002 to Blackburn et al. (Blackburn).
Per claim 15, Although Weiss teaches capturing biometric data of a user via a user image or using various technical features, as noted above, Weiss does not explicitly disclose wherein obtaining the first biometric mathematical representations of the subject comprises:- providing a machine-readable optical label based on a first biometric mathematical representations of the subject;- reading the machine-readable optical label to decode the first biometric mathematical representations of the subject.
Blackburn teaches wherein obtaining the first biometric mathematical representations of the subject comprises: providing a machine-readable optical label based on a first biometric mathematical representations of the subject; reading the machine-readable optical label to decode the first biometric mathematical representations of the subject [Paragraphs 0017, 0025, 0070, 0081 and 0123-0125].
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Weiss, which teaches authenticating user biometric data using captured images in order to allow a user access to a device or facility, to include the teachings of Blackburn to explicitly disclose that the image is a bar-code image containing the biometric data in motivation of facilitating the capturing of the biometric data of the user while also providing optimize security levels do to the actual biometric data not being captured and instead obtained from the bar-code.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
See U.S. Patent 12,198,138 to Trinh et al. which teaches systems, methods and computer-readable storage media utilized to complete a cardless transaction on a distributed ledger network. One method includes receiving, by a point-of-sale (POS) computing device, a transaction request including a biometric sample from an individual associated with a payment account at a financial institution. The method further includes authenticating, by the POS computing device, the biometric sample by cross-referencing the biometric sample with a biometric dataset stored on the distributed ledger network. The method further includes, in response to authenticating the biometric sample, generating, by the POS computing device, a cryptogram associated with the biometric sample and processing, by the POS computing device, the transaction request utilizing the cryptogram.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha W. Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699