DETAILED ACTION
The following FINAL Office action is in response to Amendment filed on April 9, 2026 for application 19049981.
Acknowledgements
Claims 1-7 have been canceled.
Claims 8-27 have been added.
Claims 8-27 have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In response to the Applicant’s arguments under 35 USC 101, Applicant argues that the pending claims are not directed to an abstract idea and fail to recite a judicial exception.
In response to the Applicant’s arguments under 35 USC 101, Examiner respectfully disagrees as pending claims 8-27 are still reciting the concept of authenticating an operation which falls within the “certain methods of organizing human activity” grouping of abstract ideas classified under “fundamental economic principles or practices”, specifically mitigating risk as part of a transaction because the claims are reciting a series of steps for authenticating an operation by using information elements such as a user identifier or a secret code with a respective security element such as a personal identification number, a password or a biometric information element to provide a more complex authentication of the user and/or the account or service. Also, the judicial exception is not integrated into a practical application because the additional elements of the claims such as a system comprising a smart card, a machine comprising a reader, input module and processing unit merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of “a system comprising a smart card, a machine comprising a reader, input module and processing unit” to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The claims do not recite an improvement to the system comprising a smart card, a machine comprising a reader, input module and processing unit.
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 8-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 8-23 are directed to a system, claims 24 is directed to a product and claims 25-27 are directed to a non-transitory computer-readable medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite authenticating an operation which is an abstract idea. Specifically, the claim recites “wherein each information element is usable to authenticate a respective operation of a plurality of operations, and wherein each information element is associated with a respective security element of a plurality of security elements; read … to obtain the information elements; receive an input; perform a plurality of validation attempts for the input, wherein each validation attempt is performed against a selected security element of the plurality of security elements; and upon one of the plurality of validation attempts succeeding, authenticate a selected operation of the plurality of operations based on the selected security element of the successful validation attempt, and wherein authenticating the selected operation comprises using the information element of the smart card that corresponds to the selected operation.” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “fundamental economic principles or practices”, mitigating risk as part of a transaction (See MPEP 2106, specifically 2106.04(a)) because – for example, in this case, the claims involve a series of steps for authenticating an operation by using information elements such as a user identifier or a secret code with a respective security element such as a personal identification number, a password or a biometric information element. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as a system comprising a smart card, a machine comprising a reader, input module and processing unit merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of “a system comprising a smart card, a machine comprising a reader, input module and processing unit” to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, the system comprising a smart card, a machine comprising a reader, input module and processing unit perform the steps or functions of “wherein each information element is usable to authenticate a respective operation of a plurality of operations, and wherein each information element is associated with a respective security element of a plurality of security elements; read … to obtain the information elements; receive an input; perform a plurality of validation attempts for the input, wherein each validation attempt is performed against a selected security element of the plurality of security elements; and upon one of the plurality of validation attempts succeeding, authenticate a selected operation of the plurality of operations based on the selected security element of the successful validation attempt, and wherein authenticating the selected operation comprises using the information element of the smart card that corresponds to the selected operation”. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106, specifically 2106.05), the additional elements of system comprising a smart card, a machine comprising a reader, input module and processing unit to automate and/or implement the abstract idea of authenticating an operation. As discussed above, taking the claim elements separately system comprising a smart card, a machine comprising a reader, input module and processing unit perform the steps of Claim 1. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of authenticating an operation. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of system comprising a smart card, a machine comprising a reader, input module and processing unit to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe details to perform authentication of either a user, device or a transaction using specific inputs. The dependent claims recite additional elements such as “a client-side apparatus, a server-side apparatus, a data processing system comprising a processor and a non-transitional computer-readable storage medium”, however, they do not integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 112
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.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being unclear for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 24 is directed to “a smart card comprising: a plurality of information elements, wherein each information element is associated with a respective security element of a plurality of security elements, wherein each information element is usable to authenticate a respective operation of a plurality of operations, wherein authenticating the respective operation of the plurality of operations comprises…”, however, Claim 24 also recites elements that are not part of the smart card such as “a reader reading the smart card to obtain the information elements; an input module receiving an input; and a processing unit coupled to the reader and the input module…”. Figure 1 discloses that a smart card 190 is completely separate from reader (115), input module (117) and processing unit (119). Therefore, the scope is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 8-14, 16-21 and 23-27 are rejected under 35 U.S.C. 102(b) as being unpatentable over Maritzen et al. (US 7,478,068 B2)
Regarding Claim 8, 24 and 25, Maritzen discloses system a comprising: a smart card comprising a plurality of information elements, wherein each information element is usable to authenticate a respective operation of a plurality of operations, and wherein each information element is associated with a respective security element of a plurality of security elements; and a machine comprising: (Fig.1; Col. 2 lines 52-64)
a reader configured to read the smart card to obtain the information elements; (Fig. 2; Col. 5 line 39- Col 6 line 26, Col. 10 lines 2-5)
an input module (“input module 660”) configured to receive an input (“biometric information, such as finger print recognition, from a user”) (Col. 3 lines 56-61, Col. 5 line 65-Col. 6 line 2, Col. 9 lines 44-46)
and a processing unit coupled to the reader and the input module, wherein the processing unit is configured to: perform a plurality of validation attempts for the input, wherein each validation attempt is performed against a selected security element of the plurality of security elements; and (Col. 9 line 26-Col. 10 line 2, “the biometric identifier data corresponds to unique information identifying each fingerprint belonging to a user. For example, the right index finger corresponds to the Visa account information under the secure data”, Col. 10 lines 22-67)
upon one of the plurality of validation attempts succeeding, authenticate a selected operation of the plurality of operations based on the selected security element of the successful validation attempt, and wherein authenticating the selected operation comprises using the information element of the smart card that corresponds to the selected operation (Col. 9 line 26-Col. 10 line 7, Col. 10 lines 22-67)
Regarding Claim 9, Maritzen discloses wherein performing the plurality of validation attempts for the input comprises: performing a first validation attempt against a stored personal identification number; upon performing the first validation attempt, performing a second validation attempt against a stored password; and upon performing the second validation attempt, performing a third validation attempt against a stored biometric information element. (Col. 9 line 26-Col. 10 line 7, Col. 9 line 26-Col. 10 line 2)
Regarding Claim 10, Maritzen discloses wherein the selected operation comprises authenticating a user (Col. 9 lines 63-65)
Regarding Claim 11, Maritzen discloses wherein the selected operation comprises authenticating a device (Col. 9 line 26-Col. 10 line 7)
Regarding Claim 12, Maritzen discloses wherein the selected operation comprises authenticating a transaction (Col. 9 line 26-Col. 10 line 7)
Regarding Claim 13, Maritzen discloses wherein the selected operation comprises proving identity (Col. 9 lines 63-65)
Regarding Claim 14, Maritzen discloses wherein the selected operation comprises confirming an order (Col. 4 lines 8-14)
Regarding Claim 16, Maritzen discloses wherein the input comprises a personal identification number (Col. 9 line 44-46).
Regarding Claim 17, Maritzen discloses wherein the input comprises a password (Col. 9 line 44-46).
Regarding Claim 18, Maritzen discloses wherein the input comprises a biometric information element (Col. 3 lines 56-61, Col. 5 line 65-Col. 6 line 2, Col. 9 lines 44-46)
Regarding Claim 19, Maritzen discloses wherein the input comprises a user input (Col. 3 lines 56-61, Col. 5 line 65-Col. 6 line 2, Col. 9 lines 44-46)
Regarding Claim 20, Maritzen discloses wherein the plurality of information elements comprise a user identifier (Col. 3 lines 56-61, Col. 5 line 65-Col. 6 line 2, Col. 9 lines 44-46)
Regarding Claim 21, Maritzen discloses wherein the plurality of information elements comprise a secret code (Col. 3 lines 56-61, Col. 5 line 65-Col. 6 line 2, Col. 9 lines 44-46)
Regarding Claim 23, Maritzen discloses wherein the machine is an automated teller machine (Fig.1; Col. 2 lines 52-64)
Regarding Claims 26, Maritzen discloses a client-side apparatus comprising the non-transitory, computer-readable medium of claim 25 (Col. 6 lines 31-63).
Regarding Claims 27, Maritzen discloses a server-side apparatus comprising the non-transitory, computer-readable medium (Fig. 1; Col. 9 lines 43-52).
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 status.
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.
Claims 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Maritzen and in further view of Zhu et al. (US 10,645,078 B2)
Regarding Claim 15, Maritzen does not disclose: wherein the selected operation comprises opening a secure door.
Zhu however discloses: wherein the selected operation comprises opening a secure door (Col. 3 lines 19-39)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Maritzen to include “wherein the selected operation comprises opening a secure door”, as disclosed in Zhu, in order to provide a system for authenticating a data center operator to obtain requested access to a data center by an approval mechanism on the data center that receives an access request that includes authentication information (see Zhu Abstract).
Regarding Claim 22, Maritzen does not disclose: wherein each validation attempt is performed using a hashing function.
Zhu however discloses wherein each validation attempt is performed using a hashing function (Col. 4 lines 21-41)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Maritzen to include “wherein each validation attempt is performed using a hashing function”, as disclosed in Zhu, in order to provide a system for authenticating a data center operator to obtain requested access to a data center by an approval mechanism on the data center that receives an access request that includes authentication information (see Zhu Abstract).
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 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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/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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