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 .
DETAILED ACTION
This is a reply to the application filed on 01/21/2025, in which, claim(s) 1-24 are pending. Claim(s) 1, 17 and 22 are independent.
Drawings
The drawings filed on 01/21/2025 are accepted by The Examiner.
Claim Objections
Claims 2-16, 18-21 and 23-24 are objected to because of the following informalities:
Claim 4 recites “decentralized identity standards under W3C”. Please spell out the acronym “W3C” to make this limitation clear.
Claim 2 recites “The digital system of claim 1 wherein the capture device…”. A comma “,” needs to be added to the limitation as “The digital system of claim 1, wherein the capture device…” to make the limitation clear. Similar situations applied to claims 3-16, 18-21 and 23-24.
Claim 4 limitation “wherein the regulatory privacy requirement is taken from the group consisting of…” should be “wherein the regulatory privacy requirement is taken from a group consisting of…” since the term “group” is mentioned for the very first time in the claim.
Claim 5 limitation “wherein the verification system includes a fraud prevention module taking from the group consisting of…” should be “wherein the verification system includes a fraud prevention module taking from a group consisting of…” since the term “group” is mentioned for the very first time in the claim.
Claim 15 limitation “a process selected from the group consisting of…” should be “a process selected from a group consisting of…” since the term “group” is mentioned for the very first time in the claim.
Appropriate correction is required.
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 17-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 17 recites “A digital system” in the preamble, "a verification system”, in the claim body. As recited in the body of the claim, the claimed system lacks a structural component because the verification system can be implemented as software only. Therefore, claim 17 is directed to non-statutory subject matter for lack of a hardware component. The Examiner respectfully suggests that the claim be further amended to positively recite at least one hardware element within the body of the claim to make the claim statutory subject matter under 35 U.S.C. 101 such as “comprising: one or more hardware processors”.
Dependent claims 18-21 don't cure the deficiency of claim 17 and are rejected under 35 U.S.C. 101 for their dependency upon claim 17.
Claim 22 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 22 recites “A digital system” in the preamble, "a verification system”, in the claim body. As recited in the body of the claim, the claimed system lacks a structural component because the verification system can be implemented as software only. Therefore, claim 22 is directed to non-statutory subject matter for lack of a hardware component. The Examiner respectfully suggests that the claim be further amended to positively recite at least one hardware element within the body of the claim to make the claim statutory subject matter under 35 U.S.C. 101 such as “comprising: one or more hardware processors”.
Dependent claims 23-24 don't cure the deficiency of claim 22 and are rejected under 35 U.S.C. 101 for their dependency upon claim 22.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24 are non-provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over:
Claims 1-21 of Patent 11,610,202.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-24 are anticipated by claims 1-21 of Patent 11,610,202.
Instant Application 19/032,916
Patent US 11,610,202 B2
Claim 1. A digital system for management of a digital identity associated with an individual comprising:
a capture device wherein the capture device is adapted to capture a biometric information, an alphanumeric information, a graphical information and any combination;
a verification system in communications with the capture device; and wherein the verification system is adapted to create a digital representation of the individual according to the biometric information, receive a digital envoy creation request, transmit the digital representation to an authority system; create a digital envoy uniquely associated with the digital representation according to receiving creation authorization from the authority system, and store the digital envoy on a portable media.
Claim 2. The digital system of claim 1 wherein the capture device is a first capture device and the verification system is adapted to receive the biometric information from a second capture device, retrieve the digital envoy from the portable media, compare the biometric information with the digital envoy, and generate a verification information representing a match between the biometric information with the digital envoy.
Claim 1. A computerized system for auditing an immutable ledger comprising:
a computer system in communication with a database and an immutable storage;
an event record having event data captured from a data capture device wherein the event data includes a location, a time, an event information, and a set of metadata wherein the set of metadata includes a digital representation captured by the data capture device of a physical object wherein the event record is stored on the database;
a first verification code included in the event record digitally representing the event record stored on the immutable ledger;
a set of computer readable instructions in communications with the computer system configured for: retrieving the event record from the database, retrieving the first verification code from the immutable ledger; creating a second verification code representing the event record; comparing the first verification code to the second verification code; creating a matching record in response to the first verification code matching the second verification code; and, storing the second verification code on the immutable storage.
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.
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 status.
Claims 1-6, 8, and 11-15 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by John F. Ellingson (US 2005/0216953 A1).
Regarding Claim 1, Ellingson discloses A digital system for management of a digital identity associated with an individual comprising:
a capture device wherein the capture device is adapted to capture a biometric information, an alphanumeric information, a graphical information and any combination ([0012], “a system for verifying identities comprising an enrollment system having: (i) at least one alphanumeric input device; (ii) at least one biometric input device”);
a verification system in communications with the capture device ([0012], “a system for verifying identities comprising an enrollment system”); and
wherein the verification system is adapted to create a digital representation of the individual according to the biometric information, receive a digital envoy creation request, transmit the digital representation to an authority system; create a digital envoy uniquely associated with the digital representation according to receiving creation authorization from the authority system ([0012], “said biometric input device capable of receiving at least one biometric identity data signal input by the user to said biometric input device…coupling the approved identity data signal and the biometric identity data signal to create at least one subfile (i.e., a digital envoy) within the escrow database for each user comprising the approved identity data signal and the biometric data signal”), and store the digital envoy on a portable media ([0036], “is stored on such a portable 01S medium”).
Regarding Claim 2, Ellingson discloses
wherein the capture device is a first capture device and the verification system is adapted to receive the biometric information from a second capture device [0012], “a system for verifying identities comprising an enrollment system having: (i) at least one alphanumeric input device; (ii) at least one biometric input device”, the second device), retrieve the digital envoy from the portable media, compare the biometric information with the digital envoy, and generate a verification information representing a match between the biometric information with the digital envoy ([0119], “The identity escrow server/database 90 compares the alphanumeric and biometric data (or the biometric data alone) of each transmitted message with the records (i.e., the digital envoy) stored in the database 90… To verify the individual's claimed identity, database 90 typically compares the transmitted biometric data to the records of the enrolled individual”, [0121], “Following each verification, database 90 produces a response in steps 110, 112 and 114. Database 90 transmits the response to output device 116, the response being that the user's identity is or is not verified”, [0036], “is stored on such a portable 01S medium”).).
Regarding Claim 3, Ellingson discloses
wherein the digital envoy is compliant with a regulatory privacy requirement ([0005], “the Self-Regulation Challenge? Federal Trade Commissioner Mozelle Thompson, Privacy in American Business”).
Regarding Claim 4, Ellingson discloses
wherein the regulatory privacy requirement is taken from the group consisting of General Data Protection Regulation, California Consumer Privacy Act, Know Your Customer, anti-money laundering regulations, Children's Online Privacy Protection Act, decentralized identity standards under W3C, and any combination thereof ([0005], “the Self-Regulation Challenge? Federal Trade Commissioner Mozelle Thompson, Privacy in American Business”).
Regarding Claim 5, Ellingson discloses
wherein the verification system includes a fraud prevention module taking from the group consisting of adaptive liveness detection, deepfake resistance technology, continuous biometric monitoring, behavioral authentication, and any combination thereof ([0082], “In order to solve the problem of excess noise and false positives, applicant employed an iterative searching process to determine which changes are innocent and which ones are fraudulent. A database representing about 56 million records of checking account openings in roughly the same period (1993) as the fraud data was supplied by a subsidiary of Deluxe Corporation. Because the geographic market penetration of the Deluxe data did not perfectly match the actual census data, the fraud model was normalized using standard techniques to account for the difference. A name matching fuzzy logic software package was acquired from Search Software American (Name 3). This name matching software allows for the fuzzy association of both alpha and numeric information with a wide range of nearly infinitely tunable association algorithms tied to the various identity data in the system”).
Regarding Claim 6, Ellingson discloses
wherein the authority system is a governmental entity recordation system adapted to provide the creation authorization upon a successful comparison of the digital representation with a governmental entity identity dataset ([0115], “the party seeking verification, i.e., the merchant, financial institution or government”).
Regarding Claim 8, Ellingson discloses
wherein the authority system includes a multi-tiered framework having government, enterprise, and decentralized identity providers ([0115], “the party seeking verification, i.e., the merchant, financial institution or government”).
Regarding Claim 11, Ellingson discloses
wherein the verification system creates a digital envoy according to a geofenced authentication validation ([0083], “The data in the final iteration was also analyzed for geographic location”).
Regarding Claim 12, Ellingson discloses
wherein the verification system is adapted to identify and store relationships between an individual digital identity and an organizational identity ([0116], “Users can be individuals or business entities and, thus, enrollment can take many forms. For example, authorization can be restricted to one or more individuals within a particular organization”).
Regarding Claim 13, Ellingson discloses
wherein the digital envoy is adapted to verify financial transaction identity validation in real time using biometric confirmation ([0108], “each enrolled user's approved alphanumeric and biometric records are stored in identity escrow database 90 ready for use in the verification process (in real time). Bach user's records can be further coupled to ancillary database 92, which may contain any other personal information such as financial and medical records”).
Regarding Claim 14, Ellingson discloses
wherein the verification system is adapted to receive an interrogation biometric input representing an identity interrogation, retrieve the digital envoy, compare the digital representation with the interrogation biometric input, and determine a match between the digital representation with the interrogation biometric input without disclosing personal identifying information ([0119], “The identity escrow server/database 90 compares the alphanumeric and biometric data (or the biometric data alone) of each transmitted message with the records (i.e., the digital envoy) stored in the database 90… To verify the individual's claimed identity, database 90 typically compares the transmitted biometric data to the records of the enrolled individual”, [0121], “Following each verification, database 90 produces a response in steps 110, 112 and 114. Database 90 transmits the response to output device 116, the response being that the user's identity is or is not verified”).
Regarding Claim 15, Ellingson discloses
wherein the verification system includes a fallback authentication process that includes a process selected from the group consisting of a one-time cryptographic challenge, a secondary multi-modal biometric confirmation, an adaptive risk-based verification, a hardware-token authentication, and an out-of-band identity verification ([0008], “i.e., verifying a person's identity by personal biological characteristics, such as voice printing, finger printing, iris scans, etc.”, “cross-reference the user's alphanumeric identity data (i.e., name, address, Social Security number, etc.”)).
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 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.
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 status.
Claims 7, 17, 20 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over John F. Ellingson (US 2005/0216953 A1) in view of Barry Katz (US 2010/0145729 A1).
Regarding Claim 7, Ellingson does not explicitly teach but Katz teaches
wherein the verification system is adapted to store the digital envoy on an immutable ledger ([0170], “transmitted to the General Ledger module”),
Ellingson and Katz are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Katz with the disclosure of Ellingson. The motivation/suggestion would have been to implement appropriate security and control procedures (Katz, [0056]).
Regarding Claim 17, Ellingson discloses A digital system for management of a digital identity associated with an individual comprising:
a verification system adapted for receiving biometric information of the individual captured by a capture device ([0012], “a system for verifying identities comprising an enrollment system having: (i) at least one alphanumeric input device; (ii) at least one biometric input device”), creating a digital representation of the individual based on the received biometric information, transmitting the digital representation to an authority system, creating a digital envoy uniquely associated with the digital representation upon receiving creation authorization from the authority system ([0012], “said biometric input device capable of receiving at least one biometric identity data signal input by the user to said biometric input device…coupling the approved identity data signal and the biometric identity data signal to create at least one subfile (i.e., a digital envoy) within the escrow database for each user comprising the approved identity data signal and the biometric data signal”); and,
wherein the verification system is adapted for receiving subsequent biometric information for authentication, retrieving the digital envoy, comparing the subsequent biometric information with the digital representation associated with the digital envoy; and generating a verification result based of the comparison ([0119], “The identity escrow server/database 90 compares the alphanumeric and biometric data (or the biometric data alone) of each transmitted message with the records (i.e., the digital envoy) stored in the database 90… To verify the individual's claimed identity, database 90 typically compares the transmitted biometric data to the records of the enrolled individual”, [0121], “Following each verification, database 90 produces a response in steps 110, 112 and 114. Database 90 transmits the response to output device 116, the response being that the user's identity is or is not verified”).
Ellingson does not explicitly teach but Katz teaches
storing on an immutable ledger and from the immutable ledger ([0170], “transmitted to the General Ledger module”),
Ellingson and Katz are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Katz with the disclosure of Ellingson. The motivation/suggestion would have been to implement appropriate security and control procedures (Katz, [0056]).
Regarding Claim 20, the combined teaching of Ellingson and Katz teaches
wherein the digital envoy is stored in a self-sovereign storage media (Ellingson, [0036], “a portable 01S medium”).
Regarding Claim 22, Ellingson discloses A digital system for management of a digital identity associated with an individual comprising:
a verification system adapted for creating a digital representation of the individual based on biometric information ([0012], “a system for verifying identities comprising an enrollment system having: (i) at least one alphanumeric input device; (ii) at least one biometric input device”), transmitting the digital representation to an authority system, creating a digital envoy uniquely associated with the individual upon receiving creation authorization from the authority system ([0012], “said biometric input device capable of receiving at least one biometric identity data signal input by the user to said biometric input device…coupling the approved identity data signal and the biometric identity data signal to create at least one subfile (i.e., a digital envoy) within the escrow database for each user comprising the approved identity data signal and the biometric data signal”); and,
wherein the verification system is adapted for receiving subsequent biometric information, retrieving the digital envoy, comparing the subsequent biometric information with the digital representation associated with the digital envoy; and generating a verification result based on the comparison ([0119], “The identity escrow server/database 90 compares the alphanumeric and biometric data (or the biometric data alone) of each transmitted message with the records (i.e., the digital envoy) stored in the database 90… To verify the individual's claimed identity, database 90 typically compares the transmitted biometric data to the records of the enrolled individual”, [0121], “Following each verification, database 90 produces a response in steps 110, 112 and 114. Database 90 transmits the response to output device 116, the response being that the user's identity is or is not verified”).
Ellingson does not explicitly teach but Katz teaches
storing on an immutable ledger and from the immutable ledger ([0170], “transmitted to the General Ledger module”),
Ellingson and Katz are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Katz with the disclosure of Ellingson. The motivation/suggestion would have been to implement appropriate security and control procedures (Katz, [0056]).
Regarding Claim 23, the combined teaching of Ellingson and Katz teaches
wherein generating the verification result prevents disclosure of personal identifying information associated with the individual (Ellingson, [0121], “Following each verification, database 90 produces a response in steps 110, 112 and 114. Database 90 transmits the response to output device 116, the response being that the user's identity is or is not verified”).
Regarding Claim 24, the combined teaching of Ellingson and Katz teaches
wherein generating the verification result includes providing a portion of personal identifying information associated with the individual (Katz, [0161], “capture unplanned activities or behaviors, display graphs of the results of the data collected”).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over John F. Ellingson (US 2005/0216953 A1) in view of Teresa C. Piliouras (US 2009/0055915 A1).
Regarding Claim 9, Ellingson does not explicitly teach but Piliouras teaches
wherein the authority system is adapted for real-time fraud detection using machine learning based anomaly detection ([0013], “This identifies how, where, and for what purpose particular identity documents are misused and can alert an authority figure in real time of a fraudulent presentation of an identity document”),
Ellingson and Piliouras are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Piliouras with the disclosure of Ellingson. The motivation/suggestion would have been to improve and protect the security of network users (Piliouras, [0011]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over John F. Ellingson (US 2005/0216953 A1) in view of Barhydt et al. (US 2006/0259361 A1).
Regarding Claim 10, Ellingson does not explicitly teach but Barhydt teaches
wherein the verification system creates a digital envoy according to a smart contract-based identity validation ([0146], “Smart contracts are a form of digital token”, [0283], “verifies that the player has the token required to verify their subscription”)
Ellingson and Barhydt are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Barhydt with the disclosure of Ellingson. The motivation/suggestion would have been for security authentication (Barhydt, [0163]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over John F. Ellingson (US 2005/0216953 A1) in view of Bhaowal et al. (US 2013/0282535 A1).
Regarding Claim 16, Ellingson does not explicitly teach but Bhaowal teaches
wherein the verification system includes logs for auditing and regulatory oversight stored on an immutable ledger ([0070], “if an audit was required of the organization's encumbrance accounting procedures, the audit log could be analyzed and processed to produce an accounting report”),
Ellingson and Bhaowal are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Bhaowal with the disclosure of Ellingson. The motivation/suggestion would have been to integrate a multi-tier security mechanisms (Bhaowal, [0061]).
Claims 18-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over John F. Ellingson (US 2005/0216953 A1) in view of Barry Katz (US 2010/0145729 A1) further in view of Nema et al. (US 2015/0074774 A1).
Regarding Claim 18, the combined teaching of Ellingson and Katz does not explicitly teach but Nema teaches
wherein the digital envoy is stored in a non-custodial digital wallet (Abstract, “stored in a variety of different mobile wallet”),
Ellingson, Katz and Nema are analogous art as they are in the same field of endeavor of information security. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Nema with the combined teaching of Ellingson and Katz. The motivation/suggestion would have been to provide a high-security, high-reliability, and high-integrity solution for pass transactions (Nema, [0186]).
Regarding Claim 19, the combined teaching of Ellingson, Katz and Nema teaches
wherein the digital envoy can only be accessed after providing and verification of the biometric information (Nema, [0004], “to authenticate or verify a person's identity prior to being granted some form of access”).
Regarding Claim 21, the combined teaching of Ellingson, Katz and Nema teaches
wherein the digital envoy can only be accessed after providing and verification of the biometric information (Nema, [0004], “to authenticate or verify a person's identity prior to being granted some form of access”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG-FENG HUANG whose telephone number is (571)272-6186. The examiner can normally be reached Monday-Friday: 9 am - 5 pm.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eleni A Shiferaw can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHENG-FENG HUANG/Primary Examiner, Art Unit 2497
Prosecution Insights