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 .
Acknowledgements
This is a first office action on the merits in response to the application filed October 29, 2024.
Claims 1-20 are pending in the application.
Claims 1-20 are examined below.
Based on a comparison of the PGPub US 2025/0139611 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on October 29, 2024 are objected to under 37 CFR 1.83(a) and 1.84. These drawings have rendered poorly upon conversion from PDF to TIFF (see Figs. 1(a) and 1(b) via PatentCenter or PGPub). This may be due to applicant's drawings including color or grayscale images. See PDF Guidelines for Patent Center.1 See also MPEP 608.02.VII regarding photographs and grayscale drawings. See also MPEP 608.02.VIII regarding color drawings or photographs.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 9, and 17 are objected to because of the following informalities: where applicant recites “and provide the minted token to the registry,” it appears that applicant intends to recite “and provides the minted token to the registry” or similar.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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 1-20 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, applicant’s recitation “providing the token for the verified data or information to the requesting entity and enabling the person or entity to continue interacting with the requesting entity if the person or entity approves sharing of the data or information” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether “enabling …” requires a further step to be performed or merely describes an intended result of the step of providing the token. For the purpose of comparison with the prior art and determination of patent eligibility, the examiner is adopting the latter interpretation, consistent with the broadest reasonable interpretation of the claims.
Claims 9 and 17 contain language similar to the recitation in claim 1 discussed in the immediately preceding paragraph, and claims 9 and 17 are rejected for reasons similar to those discussed above.
Regarding claim 4, applicant’s recitation “wherein the validating or verifying authority for the data or information is determined by the registry and is one or more of a professional organization, a government entity, or a service provider” would have been unclear to a person having ordinary skill in the art at the time of the invention. Is this further limiting the step of “identifying a validating or verifying authority for the data or information”? Or is this adding a step of “determi[ing]”? Or is this merely describing an intended result of the method? For the purpose of comparison with the prior art and determination of patent eligibility, the examiner is adopting the last interpretation, consistent with the broadest reasonable interpretation of the claims.
Claim 12 contains language similar to the recitation in claim 4 discussed in the immediately preceding paragraph, and claim 12 is rejected for reasons similar to those discussed above.
Regarding claim 7, applicant’s recitation “wherein the tag or indicator is provided to the requesting entity” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this requires a step of “provid[ing]” be performed or is merely an intended result of the method. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is adopting the latter interpretation, consistent with the broadest reasonable interpretation of the claims.
Claim 15 contains language similar to the recitation in claim 7 discussed in the immediately preceding paragraph, and claim 15 is rejected for reasons similar to those discussed above.
Regarding claim 8, applicant’s recitation “wherein the person or entity interacts with the requesting entity prior to interacting with the registry and is redirected to the registry by the requesting entity” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this requires a step of “interact[ing]” be performed or is merely an intended result of the method. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is adopting the latter interpretation, consistent with the broadest reasonable interpretation of the claims.
Claim 16 contains language similar to the recitation in claim 8 discussed in the immediately preceding paragraph, and claim 16 is rejected for reasons similar to those discussed above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either statute.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 2, 4, 5, 7-10, 12, 13, and 15-19, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Bruno (US 2020/0265417 A1) in view of Winner (US 2016/0065541 A1).
Bruno discloses as follows:
Claim
Limitation
Bruno
1,9,17
receiving at a registry, an identification of data or information a person or entity wants to make available to a third-party
"associating a user profile with identity broker 100 based on a user opting in to an identity program (Step 305). The user may provide to identity broker 100 suitable identification information such as, for example, personally identifying information including a social security number, a driver's license number, address or residence information, information that may otherwise be collected as part of a credit card application or other suitable identity or membership application, and/or the like" [0026]
1,9,17
creating a custodian wallet associated with the person or entity
"downloading to user device 140 a wallet application (Step 310)" [0027]
1,9,17
identifying a validating or verifying authority for the data or information
"receiving selections of identity providers from the user (Step 315). The user may select one or more identity providers via a wallet application or a user interface provided by identity broker 100." [0027]
1,9,17
redirecting the person or entity to the identified validating or verifying authority, wherein the validating or verifying authority operates to validate or verify the data or information identified by the person or entity, mints a token when the data or information is validated or verified by the authority, and provide the minted token to the registry
"requesting by identity broker 100 an electronic token from each of the selected identity providers. Alternatively, method 300 may comprise generating, by token engine 120, an electronic token for each of the selected identity providers. In this regard, a digital token may be associated with each electronic identification instrument as a way of further validating the authenticity of the electronic identification instrument." [0029]
1,9,17
adding the minted token to the custodian wallet associated with the person or entity
"providing the electronic identification information and/or the digital tokens to the wallet application on user device 140 for each of the selected identity providers" [0029]
1,9,17
receiving a request for verification of the data or information associated with the person or entity from a requesting entity
"RECEIVING FROM AN IDENTITY REQUESTER, AT LEAST ONE OF THE FIRST TOKEN AND THE FIRST ELECTRONIC IDENTIFICATION INSTRUMENT" element 445 in Fig. 4
1,9,17
accessing the custodian wallet associated with the person or entity and determining if it contains a token for the data or information that has been requested to be verified by the requesting entity
"COMPARING THE FIRST TOKEN AND THE FIRST ELECTRONIC IDENTIFICATION INSTRUMENT FROM THE IDENTITY REQUESTOR WITH THE VALIDATION INFORMATION" element 450 in Fig. 4"VALIDATING, VIA THE CREDENTIAL ENGINE, THE FIRST TOKEN AND THE FIRST ELECTRONIC IDENTIFICATION INSTRUMENT BASED ON THE COMPARING" element 455 in Fig. 4
1,9,17
providing the token for the verified data or information to the requesting entity and enabling the person or entity to continue interacting with the requesting entity if the person or entity approves sharing of the data or information.
"identification documents or a digital token may be simultaneously transmitted electronically to a merchant as part of a payment transaction" [0032]
2,10,18
wherein the data or information relates to the age of the person, the educational level of the person, the location of the person, a license of the person, a characteristic of the person, a status of the entity, or a characteristic of the entity
"the electronic identification instrument for a driver's license may be a digital image of the driver's license that a motor vehicle department for a government agency may otherwise issue as a card" [0028]
4,12
wherein the validating or verifying authority for the data or information is determined by the registry and is one or more of a professional organization, a government entity, or a service provider
"identity providers may include any suitable entity that issues a membership or identification card or account. For example, identity providers may include a motor vehicle department for a state or county or other governmental agency that issues driver's licenses and/or identification cards or identification accounts. Identity providers may also include loyalty program providers, insurance providers, merchants, and/or the like" [0027]
5,13
wherein the requesting entity is one of a website, an organization, an application, or a service
"Identity requester 190 may be merchant 180 or any other individual, entity, organization, governmental agency and/or the like that may request credential information, identification information and/or payment information from a user." [0023]
7,15
wherein the minted token is associated with a tag or indicator specifying the verified data or information, and further wherein the tag or indicator is provided to the requesting entity
"storing the first token and the first electronic identification instrument in identity database 130 to create validation information. Validation information may be a summary or other information that is representative of the first electronic identification instrument or the first token" [0031]
8,16
wherein the person or entity interacts with the requesting entity prior to interacting with the registry and is redirected to the registry by the requesting entity
As noted in the above 112(b) rejection, this recitation can reasonably be interpreted as non-limiting and therefore fails to distinguish the claimed invention from the prior art.
Bruno fails to explicitly disclose but Winner teaches presenting the person or entity with a display or interface requesting approval to share the data or information if the custodian wallet contains the token for the data or information that has been requested to be verified by the requesting entity (see Fig. 8B and associated text). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Bruno to include the GUI of Winner in order to achieve the predictable result of increased usability and user awareness of data shared.
Claims 3, 6, 11, 14, and 20, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Bruno in view of Winner and further in view of Ashley (US 11,507,943 B1).
Regarding claims 3 and 11, Bruno/Winner fails to explicitly disclose but Ashley teaches wherein accessing the custodian wallet associated with the person or entity is performed in accordance with a zero-knowledge protocol ("Each token is verified by the anonymous part "P2", by proving by the user correctness of the provided uniquelD using a Zero-Knowledge Proof" page 4). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Bruno/Winner to include the ZKP of Ashley in order to achieve the predictable result of increased security.
Regarding claims 6, 14, and 20, Bruno/Winner fails to explicitly disclose but Ashley teaches wherein accessing the custodian wallet associated with the person or entity is performed in accordance with a zero-knowledge protocol ("Each token is verified by the anonymous part "P2", by proving by the user correctness of the provided uniquelD using a Zero-Knowledge Proof" page 4). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Bruno/Winner to include the ZKP of Ashley in order to achieve the predictable result of increased security.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kazana (EP 3989482 B1) discloses a disposable identity system using ZKPs.
Boyle (US 12,437,299) discloses a trusted customer identity system including a registry server and a verification authority server, which issues a secure token that is provided to the user rather than the registry.
Robell (US 2024/0412220 A1) discloses a "KYC NFT" service that mints a token that serves a similar function to that minted by the claimed validating or verifying authority.
Marchetto (US 2019/0279173 A1) discloses a system for storing a federated identity on the blockchain (see [0121] - [0122], [0125]).
Moy (US 2021/0256508 A1) discloses a blockchain based system for identity management, including adding an attestation (like applicant's minted token) to the blockchain and/or a user's wallet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
1 https://www.uspto.gov/patents/apply/applying-online/efs-web-pdf-guidelines