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.
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.
DETAILED ACTION
Claim 1 is pending in this office action.
Priority
Priority is claimed to US Provisional application 63/639,855 filed 04/29/2024.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 1 lacks the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 U.S.C. 101. Claim 1 is drawn to “A computer-driven application…” comprising plurality of modules. Application by the term itself is viewed as software. The specification is silent about details of the application structure or modules. Therefore, in broad view of the independent claim, examiner views the application and application modules of claim 1 as software units, thereby rendering the claim as software per se. Thus, claim 1 is rejected for failing to fall in a statutory category.
Claim Interpretation under 35 U.S.C. 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
As to claim 1, claim limitations that claim data extraction module, random data module, combination generator and output, have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because of use of generic “modules” coupled with functional language without reciting sufficient structure to achieve their respective functions. Furthermore, the generic placeholders are not preceded by structural modifiers. A review of the specification shows that no structures have been described as to what the application is or what the application modules are.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
For claim 1, the specification does not disclose the structure for achieving the recited limitations around “data extraction module, random data module, combination generator, output”, which have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because each limitation uses a generic placeholder “means” coupled with functional language, or the means-plus-function structure allowed under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, wherein the pertinent limitations of instant claims utilize “modules, generator or output” for performing certain “function”. However under 35 U.S.C. 112(f), the means described in the claims must have adequate structural description in the specification. Through consulting the specification, a sufficient structure for the means to achieve each respective function is lacking. Furthermore, the generic placeholder “means” is not preceded by a structural modifier. Therefore, the claims lack corresponding structure in the specification, as there is no description of the structure which performs the claimed invention. As such, the claim is indefinite.
Further, the limitation “random data sets originating from sources other than said user and analogous to the pre-determined data extracted from said personal device” is not clear, in that, the specification does not offer sufficient clarity for interpreting “analogous to the pre-determined data” phrase because the random data sets are claimed to be originating from sources other than said user, and it is neither clear as to how those are analogous, nor how their utilization occurs in view of those being analogous to the user data. As such, the claim is indefinite.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 1, Examiner is unable to find support in the specification for implementation of modules or units, viz. data extraction module, random data module, combination generator, and output, wherein no structure is described anywhere in the specifications. The claims are thus rejected based on written description as failing to be supported by the original disclosure. See: MPEP §2163.01.
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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Benkreira et al. (US 2022/0188389 A1, hereinafter Benkreira), in view of Hughes (US 8984607 B1).
For claim 1, Benkreira teaches a computer-driven application to verify a user during a log-in procedure (Abstract; para 0021), comprising: a) a data extraction module which extracts and stores pre-determined data from a personal electronic device of a user (para 0021-0022, 0025-0028 - module to carry out features of extracting and storing pre-determined user data from the user device vis UI); b) a data module, which stores data sets originating from sources other than said user and analogous to the pre-determined data extracted from said personal device (para 0031-0036 - user-specific knowledge information stored and obtained from other databases not on the personal device); c) a combination generator which combines data from each of said data extraction module and said data module, to present queries to a user, to which queries said user must identify said user's own data by recognition according to said user's answers to said queries (para 0024, 0027, 0031, 0036, 0038 - combiner or aggregator that uses user’s own entered data from the user device and combined with other pertinent data to form and present questions or queries to the user, to which the user is expected to provide answers); wherein said questions are presented in at least three cycles, addressing different categories of pre-determined data each time (para 0034-0043 - three or more examples of questions provided and tracking a number of right or wrong answers to each of the at least one questions for score determination implying three or more questions being disclosed in Fig. 4A-4E); and d) an automated output to a computer, wherein when said user correctly answers three cycles of queries in succession, said user's identity is automatically verified for successful authentication (para 0021-0022, 0024, 0042, 0045).
Although Benkreira teaches selecting any questions associated with the user in order to authenticate the user for service access approval, from various sources including user device and other related data sources, wherein the order can be any order of questions thereby implying inherent lack of order of presenting user questions, or in other words randomness of questions, Benkreira does not appear to explicitly disclose, however Hughes teaches random data module, which provides random data usable for presenting challenge according to user’s own data in order to authenticate the user for login into a computing system (col. 3 lines 50-54; col. 3 line 60 - col. 4 line 39; col. 4 line 59 - col. 5 line 3; col. 7 lines 4-13 - randomness in authentication path selection associating different data questions formed based on randomness, and user authentication based on responses).
Based on Benkreira in view of Hughes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to utilize teachings of Hughes in the system of Benkreira, in order to incorporate randomness in the user authentication process, thereby avoiding predictability and impairing fraudsters, and provide authorized access to the system in order to make the system well-protected from fraudulent activities.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (1) Hwang - US 10362016 B2 (Dynamic Knowledge-based Authentication); (2) Ackerman - US 8955066 B1 (Knowledge Based Authentication Using Recent User Internet Activity); (3) Castro - US 20140137203 A1 (automatically generating challenge questions inferred from user history data for user authentication) - are cited to show methods, computer program products and systems pertinent to presenting user authentication challenges based on user’s own data selected or combined according to various methodologies.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYESH JHAVERI whose telephone number is (571)270-7584. The examiner can normally be reached on Mon-Fri 9 AM to 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, Jeffrey Pwu can be reached on (571)272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAYESH M JHAVERI/Primary Examiner, Art Unit 2433
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