DETAILED ACTION
Response to Amendment
The amendment filed on July 7, 2026, has been entered. Applicant has amended 1, 5, 6, 11, 15, and 16. Claims 1-20 remain pending and have been examined.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The effective filing date of a claimed invention is determined on a claim-by-claim basis. Any claim that only contains subject matter that is fully supported in compliance with the statutory requirements of 35 U.S.C. 112(a) by the parent application of a CIP will have the effective filing date of the parent application. On the other hand, any claim that contains a limitation that is only supported as required by 35 U.S.C. 112(a) by the disclosure of the CIP application will have the effective filing date of the CIP application. See MPEP 2152.01.
In this instance, the disclosure of the parent application of the CIP (i.e., 16/529,293) and the disclosures of the prior-filed priority applications (i.e., 15/604,372, 14/722,058, and 62/004,101) all fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims/limitations/elements of this application. The limitations/elements unsupported by the 16/529,293, 15/604,372, 14/722,058, and 62/004,101 applications include:
confirming an identity of an owner of the identification document using both a current biometric and a baseline biometric stored on the NFC chip, in claims 1 and 11;
generating, based on successfully verifying the printed identification data and confirming the identity of the owner, a user identity packet on the mobile device, in claims 1 and 11;
storing the user identity packet on the mobile device, in claims 1 and 11; and
transmitting at least a portion of the user identity packet from the mobile device to the requesting device or service in place of the data stored on the NFC chip of the identification document, without requiring access by the requesting device or service to the NFC chip, in claim 1 and 11.
Examiner notes that the 16/529,293, 15/604,372, 14/722,058, and 62/004,101 applications fail to disclose the use (e.g., storing and/or providing), or generation of, a user identity packet. The “user identity packet” is first disclosed in the 16/917,776 application, filed on June 30, 2020. It is further noted that the 16/529,293 disclosure only recites the term “NFC” three times. See ‘293 Specification [0006]; [0022]; [0032]. In these paragraphs the disclosure merely indicates, at a high level of generality, that a client device can include an NFC reader and that the NFC reader can be used to scan an RFID chip. Id.
Since the 16/529,293, 15/604,372, 14/722,058, and 62/004,101 applications fail to provide adequate support or enablement for independent claims 1 and 11, independent claims 1 and 11 are not entitled to the effective filing date of the 16/529,293, 15/604,372, 14/722,058, and 62/004,101 applications. Claims 2-10 and 12-20 are not entitled to the effective filing date of the 16/529,293, 15/604,372, 14/722,058, and 62/004,101 applications due to their dependency on claim 1 or 11. Accordingly, claims 1-20 have been given the effective filing date of the 16/917,776 application, filed on June 30, 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/20/2026 is in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification Amendment
The amendment to paragraph [0045] of the Specification, submitted on July 7, 2026, has been reviewed and is acceptable. The amendment will be entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7-9, 11-15 and 17-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Loughlin-McHugh et al. (US 2016/0239657 A1) (hereinafter “McHugh”).Regarding Claims 1 and 11: McHugh discloses:
Claim 1: A method, comprising:Claim 11: A device, comprising:
a processor (See at least McHugh [0046] “at least one processor 114”; Fig. 1a); and
a memory coupled to the processor, the memory storing instructions executable by the processor (See at least McHugh [0046] “at least one processor 114 executing identity management code, and electronic storage components providing secure storage. There can be multiple processors in a distributed micro processing network, or a central processing unit at a single or multiple servers. The electronic storage components can take any form and may be local or remote memory.”; Fig. 1a) to perform a method comprising:
receiving a photograph of an identification document positioned in a machine-readable zone of a camera coupled with a mobile device, the identification document comprising printed identification data and a near-field communication (NFC) chip storing identification data (See at least McHugh [0061]; [0181-0185]; [0195-0199]; [0217]; also see [0064-0071] which describes how the data from the identity document (e.g., electronic passport) can be collected in a trusted manner. McHugh discloses receiving a photograph (i.e., camera capture) of an identification document (i.e., identity document) positioned in a machine-readable zone (i.e., scanning area) of a camera coupled with a mobile device (i.e., camera coupled with a user/computer/enrolling/registrant device, e.g., user device 12), the identification document (i.e., identity document) comprising printed identification data (e.g., an MRZ) and a near-field communication (NFC) chip storing identification data (i.e., NFC data).);
extracting the printed data from the photograph using optical character recognition (See at least McHugh [0061]; [0195-0199]; [0217]. McHugh discloses extracting the printed data (i.e., extracting the data from the MRZ) from the photograph using optical character recognition (i.e., using an OCR service).);
verifying that the printed identification data matches the identification data stored on the NFC chip (See at least McHugh [0195-0199]; [0217]. McHugh discloses verifying that the printed identification data (i.e., the returned data/the OCRed data) matches (i.e., “confirm that the two data sources present the same identity”) the identification data stored on the NFC chip (i.e., the NFC data).);
confirming an identity of an owner of the identification document using both a current biometric and a baseline biometric stored on the NFC chip (See at least McHugh [0061]; [0181-0185]; [0197-0199]; [0217]; Fig. 11A. McHugh discloses confirming an identity of an owner of the identification document (i.e., identity document) using both a current biometric (i.e., a selfie/confirmation photograph) and a baseline biometric stored on the NFC chip (i.e., embedded photograph/a photo extracted from the NFC chip).);
generating, based on successfully verifying the printed identification data and confirming the identity of the owner, a user identity packet on the mobile device (See at least McHugh [0196-0199]; [0217-0220]; [0546]; [0548]; [0564]. McHugh discloses generating, based on successfully verifying the printed identification data (i.e., “confirm that the two data sources present the same identity”) and confirming the identity of the owner (e.g., by comparing the selfie/confirmation photograph to the embedded photograph/a photo extracted from the NFC chip), a user identity packet (i.e., credential) on the mobile device (i.e., on the user/computer/enrolling/registrant device).);
obtaining a mobile device identifier from the mobile device (See at least McHugh [0013]; [0249]; [0439]; [0443]. McHugh discloses obtaining a mobile device identifier (i.e., device identifier) from the mobile device.);
verifying the mobile device by comparing the mobile device identifier with stored information that identifies the mobile device as belonging to the user (See at least McHugh [0014]; [0443]; [0536]. McHugh discloses verifying the mobile device by comparing (i.e., during the matching) the mobile device identifier (i.e., device identifier) with stored information that identifies the mobile device as belonging to the user (i.e., with a device identifier stored at the digital identify system).);
storing the user identity packet on the mobile device (See at least McHugh [0053]; [0220]; [0548]. McHugh discloses storing the user identity packet (i.e., credential) on the mobile device.); and
in response to receiving a request for identification from a requesting device or service, transmitting at least a portion of the user identity packet from the mobile device to the requesting device or service in place of the data stored on the NFC chip of the identification document, without requiring access by the requesting device or service to the NFC chip (See at least McHugh [0006]; [0057]; [0146-0147]; [0243-0245]; [0313]; [0335]; [0339]; [0391-0392]. McHugh discloses in response to receiving a request for identification (i.e., a request for credentials for authentication) from a requesting device or service (i.e., from a validator/requesting device, e.g., from a uPass reader requesting credentials for authentication, from another device during mutual authentication), transmitting at least a portion of the user identity packet (i.e., credential) from the mobile device (i.e., from the user/computer/enrolling/registrant device) to the requesting device or service (i.e., to the validator/requesting device, e.g., to a uPass reader requesting credentials for authentication, to another device during mutual authentication) in place of the data stored on the NFC chip of the identification document (i.e., in place of the NFC data), without requiring access by the requesting device or service to the NFC chip (note the validator/requesting device does not need access to the NFC chip (e.g., the NFC chip in a passport)).).
Regarding Claims 2 and 12: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses providing instructions to the owner of the identification document to obtain the current biometric using the mobile device (See at least McHugh [0061]; [0078]; [0157]; [0173]; [0181]; [0183]; [0185]; Fig. 11A “Take a selfie”. McHugh discloses providing instructions to the owner of the identification document (i.e., to the registrant) to obtain the current biometric (i.e., selfie) using the mobile device (i.e., using an app on their smartphone or table).).
Regarding Claims 3 and 13: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses receiving the current biometric from the mobile device and evaluating the current biometric (See at least McHugh [0061]; [0167]; [0181-0185]; [0197-0199]; [0217]. McHugh discloses receiving the current biometric (i.e., selfie/confirmation photograph) from the mobile device and evaluating the current biometric (e.g., by comparing the photo extracted from the passport scan, and/or the photo extracted from the NFC data, to the selfie/confirmation photograph).).
Regarding Claims 4 and 14: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses wherein the current biometric comprises one of a selfie, a photograph, a retinal scan, an iris scan, a fingerprint, or other biometric data (See at least McHugh [0061]; [0181-0185]; [0197-0199]; [0217]).
Regarding Claims 5 and 15: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses storing the baseline biometric data on the NFC chip by an issuing authority of the identification document (See at least McHugh [0005]; [0012]; [0052]; [0064]; [0195]; [0197]; Fig. 5. McHugh discloses storing the baseline biometric data (i.e., photo extracted from the NFC chip) on the NFC chip by an issuing authority of the identification document (i.e., by a government institution).).
Regarding Claims 7 and 17: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses wherein confirming an identity of an owner of the identification document using both a current biometric and a baseline biometric stored on the NFC chip further comprises extracting the baseline biometric from the NFC chip (See at least McHugh [0061]; [0197-0199]; [0217]. McHugh discloses wherein confirming an identity of an owner of the identification document (i.e., identity document) using both a current biometric (i.e., a selfie/confirmation photograph) and a baseline biometric stored on the NFC chip (i.e., embedded photograph/a photo extracted from the NFC chip) further comprises extracting the baseline biometric from the NFC chip (i.e., extract relevant data (e.g., a photo) from the NFC chip).).
Regarding Claims 8 and 18: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses wherein confirming an identity of an owner of the identification document using both a current biometric and a baseline biometric stored on the NFC chip further comprises evaluating the baseline biometric to confirm the identity of the owner of the identification document (See at least McHugh [0061]; [0167]; [0197-0199]; [0217]. McHugh discloses wherein confirming an identity of an owner of the identification document (i.e., identity document) using both a current biometric (i.e., a selfie/confirmation photograph) and a baseline biometric stored on the NFC chip (i.e., embedded photograph/a photo extracted from the NFC chip) further comprises evaluating the current biometric to confirm the identity of the owner of the identification document (e.g., by comparing the photo extracted from the passport scan, and/or the photo extracted from the NFC data, to the selfie/confirmation photograph).).
Regarding Claims 9 and 19: McHugh discloses the method of claim 1 and the device of claim 11. McHugh further discloses wherein the identification document is one of a biometric passport, a digital passport, a passport, a government issued ID, and a drivers' license (See at least McHugh [0006]; [0012]; [0052]; [0087]; [0474]. McHugh discloses wherein the identification document (i.e., identity document) is one of a biometric passport, a digital passport (i.e., electronic passport), a passport (i.e., passport), a government issued ID (e.g., passport, driving license), and a drivers' license (i.e., driving license).).
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
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.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over McHugh, as applied above, and further in view of Sajkowsky (US 2009/0266882 A1).
Regarding Claims 6 and 16: McHugh discloses the method of claim 1 and the device of claim 11. McHugh indicates that the baseline biometric data (i.e., photo extracted from the NFC chip) is stored on the NFC chip by an issuing authority of the identification document (i.e., by a government institution). McHugh [0005]; [0012]; [0052]; [0064]; [0195]; [0197]; Fig. 5. However, McHugh does not explicitly disclose obtaining the baseline biometric data for the NFC chip when the owner of the identification document applies for or obtains the identification document.
Sajkowsky, on the other hand, teaches obtaining the baseline biometric data for the chip when the owner of the identification document applies for or obtains the identification document (See at least Sajkowsky [0032-0034]; [0055]; [0070]; [0072-0074]; Fig. 11 Step 212; Fig. 13 steps 312-314. Sajkowsky teaches obtaining the baseline biometric data (e.g., fingerprint, photograph) for the chip (i.e., for the RF signal device) when the owner of the identification document (e.g., foreign visitor with a smart visa, traveler with a smart passport) applies for or obtains the identification document (e.g., the smart visa, smart passport, smart ID).).
In view of the teachings provided by Sajkowsky, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate “obtaining the baseline biometric data for the NFC chip when the owner of the identification document applies for or obtains the identification document” into McHugh’s method, which uses a government authority to store baseline biometric data (i.e., photo extracted from the NFC chip) on an NFC chip. One of ordinary skill in the art would have been motivated to include such features so that identifying information of the user/visitor/traveler can be permanently encase/embedded in the identification card (e.g., passport) (Sajkowsky [0028]; [0032]).
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over McHugh, as applied above, and further in view of Anantha et al. (US 2012/0144201 A1) (hereinafter “Anantha”).
Regarding Claims 10 and 20: McHugh discloses the method of claim 1 and the device of claim 11. As indicated above, McHugh discloses storing the user identity packet (i.e., credential) on a mobile device. McHugh [0053]. However, McHugh does not explicitly disclose wherein the storing of the user identity packet on the mobile device is performed in an encrypted manner.
Anantha, on the other hand, teaches wherein the storing of the user identity packet on the mobile device is performed in an encrypted manner (See at least Anantha [0047]; [0058-0059]; [0062]; Fig. 2; Fig. 5. Anantha further teaches wherein the storing of the user identity packet (i.e., credential) on the mobile device (i.e., on the mobile communication device) is performed in an encrypted manner (e.g., by providing the encrypted credential to the secure element library, and/or by providing the credential in an encrypted form to the mobile device and only decrypting the credential once it is inside the secure element).).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify McHugh’s method, which stores a user identity packet (i.e., credential) on a mobile device, to include the teachings of Anantha. One of ordinary skill in the art would have been motivated to include such features in order to securely store a credential within a secure element without exposing the credential to malicious parties (Anantha [0063]).
Response to Arguments
Specification Amendment
The Specification amendment has been entered. Examiner appreciates that Applicant identified the corresponding support for the amendment.
Claim Interpretation
Applicant indicates that claims 5, 6, 15 and 16 have been amended to positively recite the steps. Examiner agrees.
Claim Rejections – 35 U.S.C. § 101
With respect to the 35 U.S.C. 101 rejection, Applicant argues that the claims are not direct to certain methods of organizing human activity. Amendment, pp. 13-17. Examiner respectfully disagrees. Examiner contends that the claims continue to recite the abstract idea, or combination of abstract ideas, of validating user information, generating and storing an indication the user information has been validated, and subsequently providing the indication of validation when a request for user information is received. This concept/abstract idea falls within the Certain Methods of Organizing Human Activity grouping because it describes a commercial or legal interaction (e.g., managing interactions between a verifying entity and an owner of the ID document, and/or a commercial/legal interaction of validating a user identity, etc.).
Applicant alleges that the claims are directed to a technical improvement in identification document security because they increase efficiency by centralizing the source for identification data packets in a single place and eliminating the need for multiple, redundant storage devices. Amendment, pp. 16-17. This argument is unpersuasive. Examiner fails to find any indication that the claimed invention increases/improves efficiency of storage devices. The only limitation in the independent claims that pertains to storage is the storage of the identity packet on the mobile device. There is no indication that this storage device, and/or the method of data storage, is/are improved. Additionally, there is no indication that the claimed invention centralizes the source for identification packets in a single place. Examiner further notes that merely making a business decision to store data at a centralized location is not an indication that the devices storing the data, and/or the technology associated with data storage, is/are improved.
Applicant argues that the claims are directed to an improvement and submits that the claims should be allowed under Step 2A Prong II. Amendment, pp. 17-20. This argument is unpersuasive. Examiner fails to find that there is any improvement to the functioning of a computer or to any other technology or technological field. While the claim uses various technical features (e.g., Near-field communication (NFC), optical character recognition (OCR), biometric comparisons, etc.), there is no indication that these technologies are improved by the claimed invention. The claimed invention is merely utilizing these technologies in the manner they were intended to be utilized (e.g., using NFC to transfer data, using OCR to recognize text, comparing stored biometrics to captured biometrics, etc.).
Applicant argues that amended claim 1, when considered as an ordered combination, provides an inventive concept that improves upon existing technology. Amendment, p. 20-23. Applicants’ arguments have been considered and were found to be persuasive. Applicants’ disclosure indicates that ID document tampering is problematic and that current methods to prevent tampering are difficult and expensive. Specification [0015]. The claimed invention solves this problem by using various methods (e.g., photographs, OCR, NFC) to obtain data/information from an ID document and then validates the obtained data/information to ensure the data/information obtained via the various methods matches. Once the data is sufficiently validated, the mobile device is provided with an identity packet that can subsequently be utilized for identification purposes without the need to re-present the ID document. Accordingly, while the claim(s) still could be construed as reciting one or more abstract ideas (e.g., validating user information, generating and storing an indication the user information has been validated, and subsequently providing the indication of validation), the claim(s) when considered as a whole recite additional elements which integrate any abstract idea into a practical application. In view of the current claim amendments, the 35 U.S.C. 101 rejection is withdrawn.
Claim Rejections – 35 U.S.C. § 103
Applicant argues that the cited art does not teach or suggest "verifying that printed identification data matches the identification data stored on the NFC chip." Amendment, pp. 23-25. Examiner respectfully disagrees. McHugh discloses verifying that the printed identification data (i.e., the returned data/the OCRed data) matches (i.e., “confirm that the two data sources present the same identity”) the identification data stored on the NFC chip (i.e., the NFC data). McHugh [0195-0199]; [0217]. That is, McHugh discloses comparing data, which was captured via a photograph and OCRed (i.e., printed data), to data that was read from an NFC chip. McHugh indicates that these two data sources are compared in order to “confirm that the two data sources present the same identity.” McHugh [0217].
Applicant argues that the cited art does not teach or suggest "verifying the mobile device by comparing the mobile device identifier with stored information that identifies the mobile device as belonging to the user." Amendment, pp. 25-26. Examiner respectfully disagrees. McHugh discloses obtaining a mobile device identifier (i.e., device identifier) from the mobile device. McHugh [0013]; [0249]; [0439]; [0443]. McHugh also discloses verifying the mobile device by comparing (i.e., during the matching) the mobile device identifier (i.e., device identifier) with stored information that identifies the mobile device as belonging to the user (i.e., with a device identifier stored at the digital identify system). McHugh [0014]; [0443]; [0536].
For the above reasons, and for those set forth in the 35 U.S.C. § 102 and the 35 U.S.C. § 103 rejections seen above, the prior art rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Natale et al. (US 2014/0270400 A1) discloses where data/information (i.e. an electronic record) is obtained/extracted from a near-field communications (NFC) chip (i.e. from an NFC chip embedded inside a travel document) and the NFC chip is subsequently validated by validating the data contained in the NFC chip (e.g., by comparing the obtained/extracted travel document information to a list of passengers registered for the flight). Natale [0008-0010]; [0040-0042]; [0045]; [0047]; [0050-0052].
Mattes et al. (US 2014/0279519 A1) discloses receiving an image of an identification document of the user during a first transaction with a first party, wherein the image is obtained using an image acquisition module of a device of the user, receiving a device ID of the user's device, extracting identification credentials of the user from the image, storing the identification credentials of the user and the device ID of the user's device on a server, wherein the device ID is associated with the identification credentials of the user. Mattes Abstract.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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