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 .
Response to Amendment
Claims 1, 3-13, 15 and 17-19 are pending. Claims 1, 13 and 15 are currently amended. Claims 2, 14 and 16 are canceled. Claims 17-19 are newly added.
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 8-10 “…Applicant respectfully submits that claim 1 recites an improvement in computer-based document signing and certification technology by providing tamper-detectable certification of an association between a signatory and a signed electronic document. Thus, Applicant respectfully submits that claim 1 integrates the alleged abstract idea into a practical application and is therefore directed to statutory subject matter. Claim 4-12 depend from claim 1 and are submitted to be directed to statutory subject matter for at least similar reasons. While the language and scope of independent claims 13 and 15 are not identical to the language and scope of claim 1, the patent eligibility of claims 13 and 15 is apparent in view of the above discussion of claim 1. For at least the reasons stated above, Applicant respectfully submits that claims 1, 4-13, and 15 are directed to statutory subject matter. Accordingly, reconsideration and withdrawal of the above rejection of claims 1, 4-13, and 15 is respectfully requested.,” the examiner disagrees for the following reasons below:
Applicant argues the claims show improvement in computer-based document signing and certification technology by providing tamper-detectable certification of an association between a signatory and a signed electronic document; however, the claims covers performance of the limitation in the mind but for the recitation of generic computer components. The claims added limitations to generate an electronic signature and second certificate, however, the claims does not provide any limitations to provide an improvement. Thus, the claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed below with respect to integration of the abstract idea into a practical application, the additional element amounts to no more than mere instructions to apply the exception using a generic computer component. Therefore, the claims are not allowed. The examiner suggests using the second certificate or first certificate to provide some type of verification and an outcome/improvement of the verification.
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, 3-13, 15 and 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 1 recites acquiring a user decentralized identifier…, calculating a hash value…, generating a first certificate…, generating an electronic signature…, and generating a second certificate.
The limitation of acquiring a user decentralized identifier, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “one or more computers” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a computing device” language, “acquiring” in the context of this claim encompasses the user manually receiving data. Similarly, the limitations of calculating a hash value…, generating a first certificate…, generating an electronic signature, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements – using one or more computers to perform the steps. The one or more computers are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function), such that they amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does 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 element amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Independent claims 13 and 15 includes limitations similar to the limitations of independent claim 1 and rejected under 3 USC 101 for being directed to abstract idea for similar reasons as discussed above with respect to independent claim 1.
Dependent claims 3-12 and 16-19 do not cure the deficiency of the independent claims and are rejected under 35 USC 101 for being directed to abstract idea.
Allowable Subject Matter
Claims 1, 3-13, 15 and 17-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Examiner’s Statement for Indicating Allowable Subject Matter
The following is a statement of reasons for the allowance: After further search and consideration and the amendments, the prior art either taken alone or in combination neither anticipates nor render obvious to the claimed subject matter of the instant application. The prior art Yang et al. (US Pub No. 2021/0351934) discloses verifiable-claim issuance. One of the methods includes: receiving, from a first entity, a request for creating a verifiable claim (VC) for a decentralized identifier (DID) associated with a second entity; obtaining, in response to receiving the request, a digital signature associated with the first entity; and generating the VC based on the received request and the obtained digital signature (Yang, Abstract), HU et al. (US Pub No. 2025/0132919) discloses identity verification-authentication system and method are used for verifying and authenticating at least a first user. The system includes a first prover for acquiring a first unique feature provided by the first user; and a verifier in communication with the first prover for generating a first proof request. The verifier sends a first variant data included in the first proof request to the first prover. The first prover generates a first to-be-compared answer data according to the first unique feature and the first variant data. The first prover or the verifier then generates a determination result according to a comparison of the first to-be-compared answer data and a first answer data included in the first proof request, and determines whether the identity verification and authentication of the first user is successfully according to the determination result. (Yang, Abstract), Switchyarn et al. (US Pub No. 2024/0195634) discloses signing and submitting an electronic document in the present invention. In step 101, the process is initiated by a signer on an auxiliary client system, where the signer may input information related to the electronic document. In step 102, the auxiliary client system submits a request for the electric document along with sending information that is input by the signer, if any, to a server system. After the request is received at step 103, the server system generates a copy of the electronic document at step 104 by using the schema that is stored in an electronic document repository at step 105. In step 106, the copy of the electronic document-along with, if any, document metadata, such as the timestamp at which the server system received the request; information of a recipient system, such as its service endpoint; and information from the auxiliary client system-to the auxiliary client system at step 107. Subsequently, the auxiliary client system generates a visual indicium at step 108 and displays the indicium along with the electronic document to a client system at step 109. At step 110, the client system extracts the indicium and the electronic document from the display of the auxiliary client system. At step 111, the client system prompts the signer to authenticate in order to allow the client system to access a private key inside a key repository at step 112. At step 113, the client system subsequently displays an indication of a single action in relation to the indicium that can be performed by the signer. At step 114, the signer performs said single action, which triggers the client system to notify the auxiliary client system at step 115. At steps 116, 117, and 118, the client system uses the private key from the key repository and the copy of the electronic document to create a digital signature. At step 119, the identifier, such as a service endpoint, of the recipient system from the auxiliary client system is used by the client system to establish a secure connection with the recipient system at steps 120 and 121. If the embodiment in FIG. 1 is configured to include proof of the signer's ownership of the public key, a data repository of the client system at step 122 is used to generate public-key-derived data, such as a digital certificate or a decentralized identifier that is associated with the public key, at step 123. At steps 124, 125, and 126, the client system submits the digitally signed electronic document-comprising the digital signature, the copy of the electronic document, and the public-key-derived data-to the recipient system at step 127. Finally, the recipient system stores the copy of said digitally signed electronic document in its signed electronic document repository at step 128. In an alternative embodiment, steps 113, 117, and 119 could be executed by the server system (Switchyarn, paragraph 0022) and Chodroff et al. (US Pub No. 2024/0086503) discloses computing system receives a request to verify a user, the request comprising an indication of a jurisdiction in which the user will be verified. Based on the request, the computing system collects information related to the user. Based on the request, the computing system identifies a workflow corresponding to the jurisdiction. The workflow defines conditions for obtaining a verified status in the jurisdiction. The computing system executes the workflow to verify the user. The computing system hashes the verification record using a zero-knowledge proof protocol. The computing system generates a non-fungible token corresponding to the verification record. The non-fungible token is associated with a hashed version of the verification record. The computing system broadcasts the non-fungible token to a blockchain. (Chodroff, Abstract), however, the prior art taken alone or in combination does not teach or suggest “acquiring a user decentralized identifier for identifying a signatory who provides a handwritten signature to an electronic document; calculating a hash value of a document file representing the electronic document provided with the handwritten signature by the signatory; generating a first certificate including the user decentralized identifier and the hash value of the document file; generating a first electronic signature of the first certificate by encrypting a hash value of the first certificate; and generating a second certificate including the first electronic signature and the first certificate” (claim 1), and “acquiring a user decentralized identifier for identifying a signatory who provides a handwritten signature to an electronic document; calculating a hash value of a document file representing the electronic document provided with the handwritten signature by the signatory; generating a first certificate including the user decentralized identifier and the hash value of the document file; generate a first electronic signature of the first certificate by encrypting a hash value of the first certificate, generate a second certificate including the first electronic signature and the first certificate, calculate a hash value of the first certificate included in the second certificate with the first electronic signature, and decrypt the first electronic signature included in the second certificate with the first electronic signature to obtain a value and compare the value and the hash value of the first certificate” (claims 13 & 15), in combination with the remaining claim limitations.
Conclusion
THIS ACTION IS MADE FINAL. 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 CR 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAQUEAL D WADE whose telephone number is (571)270-0357. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAQUEAL D WADE-WRIGHT/Primary Examiner, Art Unit 2407
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